What is the purpose of form paragraph 7.05.016 in patent examination?

Form paragraph 7.05.016 is used for rejections under 35 U.S.C. 101 when the claimed invention is directed to a judicial exception without significantly more (i.e., without an inventive concept). This form paragraph should be preceded by form paragraph 7.05.

The MPEP provides the following structure for this form paragraph:

“the claimed invention is directed to [1] without significantly more. The claim(s) recite(s) [2]. This judicial exception is not integrated into a practical application because [3]. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because [4].”

The examiner must fill in the brackets with specific information about the claim:

  • [1]: Identify whether the claim(s) are directed to a law of nature, natural phenomenon, or abstract idea.
  • [2]: Identify and explain the exception as recited in the claim.
  • [3]: Explain why the additional elements fail to integrate the judicial exception into a practical application.
  • [4]: Explain why the additional elements do not add significantly more to the exception.

This form paragraph is crucial for articulating the reasoning behind a subject matter eligibility rejection at Step 2B of the analysis.

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Topics: MPEP 2100 - Patentability, MPEP 2106.07(A)(1) - Form Paragraphs For Use In Lack Of Subject Matter Eligibility Rejections, Patent Law, Patent Procedure
Tags: 35 u.s.c. 101, Form Paragraph 7.05.016, inventive concept, Judicial Exception, Patent Rejection