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