2106.07 Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility
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The evaluation of whether the claimed invention qualifies as patent-eligible subject matter should be made on a claim-by-claim basis, because claims do not automatically rise or fall with similar claims in an application.
If the evaluation of the claimed invention results in a conclusion that it is more likely than not that the claim as a whole does not satisfy both criteria for eligibility (Step 1: NO and/or Step 2B: NO), then examiners should formulate an appropriate rejection of that claim under Step 1 and/or Step 2B.
- The rejection should set forth a prima facie case of ineligibility under the substantive law.
When an examiner determines a claim does not fall within a statutory category (Step 1: NO), the rejection should provide an explanation of why the claim is not directed to one of the four statutory categories of invention.
When an examiner determines that a claim is directed to a judicial exception (Step 2A: YES) and does not provide an inventive concept (Step 2B: NO), the rejection should provide an explanation for each part of the Step 2 analysis.
If the evaluation of the claimed invention results in a conclusion that it is more likely than not that the claimed invention falls within a statutory category (Step 1: YES) and is either not directed to a judicial exception (Step 2A: NO) or is directed to a judicial exception and amounts to significantly more than the judicial exception (Step 2B: YES), then the examiner should not reject the claim.
- When evaluating a response by applicant to a subject matter eligibility rejection, examiners must carefully consider all of applicant’s arguments and evidence presented to rebut the rejection.
- If applicant properly challenges the examiner’s findings, the rejection should be withdrawn or, if the examiner deems it appropriate to maintain the rejection, a rebuttal must be provided in the next Office action.
2106.07(a) Formulating a Rejection For Lack of Subject Matter Eligibility
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Subject matter eligibility rejections under Step 1 are discussed in MPEP § 706.03(a).
A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis:
- For Step 2A, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception.
- For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.
- Similarly, if the claim is directed to a law of nature or a natural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e., set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.
- For Step 2B, the rejection should identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception identified in Step 2A.
- For instance, when the examiner has concluded that certain claim elements recite well understood, routine, conventional activities in the relevant field of art, the rejection should explain why the courts have recognized, or those in the field would recognize, the additional elements when taken both individually and as a combination to be well-understood, routine, conventional activities.
Under the principles of compact prosecution, regardless of whether a rejection under 35 U.S.C. 101 is made based on lack of subject matter eligibility, a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting.
- Thus, examiners should state all non-cumulative reasons and bases for rejecting claims in the first Office action.
I. WHEN MAKING A REJECTION, IDENTIFY AND EXPLAIN THE JUDICIAL EXCEPTION RECITED IN THE CLAIM (STEP 2A)
A subject matter eligibility rejection should point to the specific claim limitation(s) that recites (i.e., sets forth or describes) the judicial exception.
- The rejection must identify the specific claim limitations and explain why those claim limitations set forth a judicial exception (e.g., an abstract idea).
- Where the claim describes, but does not expressly set forth, the judicial exception, the rejection must also explain what subject matter those limitations describe, and why the described subject matter is a judicial exception.
When the examiner has determined the claim recites an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea.
- Citing to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution.
When the examiner has determined the claim recites a law of nature or a natural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e., set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.
When the examiner has determined the claim recites a product of nature, the rejection should identify the exception as it is recited (i.e., set forth or described) in the claim, and explain using a reasoned rationale why the product does not have markedly different characteristics from its naturally occurring counterpart in its natural state.
II. WHEN MAKING A REJECTION, EXPLAIN WHY THE ADDITIONAL CLAIM ELEMENTS DO NOT RESULT IN THE CLAIM AS A WHOLE AMOUNTING TO SIGNIFICANTLY MORE THAN THE JUDICIAL EXCEPTION (STEP 2B)
After identifying the judicial exception in the rejection, identify any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception and explain why they do not add significantly more to the exception.
- The explanation should address the additional elements both individually and as a combination when determining whether the claim as whole recites eligible subject matter.
A rejection should be made only if it is readily apparent to an examiner relying on the examiner's expertise in the art in the Step 2B inquiry that the additional elements do not amount to claiming significantly more than the recited judicial exception.
For claim limitations that recite a generic computer component performing generic computer functions at a high level of generality, such as using the Internet to gather data, examiners can explain why these generic computing functions do not meaningfully limit the claim.
- MPEP § 2106.05(d) lists some computer functions that the courts have recognized as well-understood, routine, conventional functions when they are claimed in a merely generic manner.
- This listing is not meant to imply that all computer functions are well-understood, routine, conventional functions, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible.
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, or that generally link the use of the judicial exception to a particular technological environment or field of use), examiners can explain why they do not meaningfully limit the claim.
III. EVIDENTIARY REQUIREMENTS IN MAKING A § 101 REJECTION
The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law.
- Thus, the court does not require “evidence” that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues.
When determining whether claimed subject matter is judicially-excepted, the Federal Circuit typically compares the claimed subject matter to subject matter identified as an exception in its prior precedent.
Similarly, the courts do not require any evidence when conducting the significantly more inquiry, even where additional elements were identified as well-understood, routine and conventional in the art.
When performing the analysis at Step 2A, it is sufficient for the examiner to provide a reasoned rationale that identifies the judicial exception recited in the claim and explains why it is considered a judicial exception.
- Therefore, there is no requirement for the examiner to rely on evidence, such as publications, to find that a claim is directed to a judicial exception.
Similarly, at Step 2B, there is no requirement for evidence to support a finding that the claim does not recite significantly more than the judicial exception (e.g., the additional limitations are well-understood, routine, conventional activities).
- However, if available, sources of evidence can be provided to support the assertion or, when appropriate, to rebut an argument or evidence from applicant.
2106.07(b) Evaluating Applicant's Response
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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, and/or
- (ii) present persuasive arguments or evidence based on a good faith belief as to why the rejection is in error.
If applicant's claim amendment(s) and/or argument(s) persuasively establish that the claim is not directed to a judicial exception or is directed to significantly more than a judicial exception, the rejection should be withdrawn.
- Applicant may argue that a claim is eligible because the claim as a whole amounts to significantly more than the judicial exception when the additional elements are considered both individually and in combination.
- In addition, even if an element does not amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still amount to significantly more when considered in combination with the other elements of the claim.
2106.07(c) Clarifying the Record
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» 2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement
