How should patent examiners explain rejections based on insignificant extra-solution activity?
When rejecting a claim based on insignificant extra-solution activity, patent examiners should provide a clear explanation. The MPEP 2106.05(g) advises:
“For claim limitations that add insignificant extra-solution activity to the judicial exception (e.g., mere data gathering in conjunction with a law of nature or abstract idea), examiners should explain in an eligibility rejection why they do not meaningfully limit the claim.”
The MPEP provides an example of how an examiner might explain such a rejection:
“For example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area.”
This explanation helps applicants understand why certain elements in their claims are considered insignificant extra-solution activity and how this affects the overall patent eligibility of their invention.
For more detailed guidance on formulating subject matter eligibility rejections, examiners are directed to MPEP § 2106.07(a).
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