What options does an applicant have in responding to a subject matter eligibility rejection?

An applicant has several options when responding to a subject matter eligibility rejection:

1. Amend the claim to add additional elements or modify existing elements
2. Present arguments explaining why the rejection is in error
3. Submit evidence to traverse the rejection

The MPEP outlines these options:

“In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: (i) amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception, (or integrates the judicial exception into a practical application), (ii) present persuasive arguments based on a good faith belief as to why the rejection is in error and/or (iii) submit evidence traversing a subject matter eligibility rejection according to the procedures set forth in MPEP § 716.01 and 37 CFR 1.132.”

Applicants should choose the most appropriate response strategy based on the specific rejection and the invention’s nature.

To learn more:

• subject matter eligibility
• applicant response
• claim amendments
• patent prosecution