MPEP Q & A 120: What May an Applicant do in Response to a Rejection Based on Failure to Claim Patent-Eligible Subject Matter?

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Question:

What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter?

Answer:

In response to a rejection based on failure to claim patent-eligible subject matter, applicant may:

  • 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
  • Present persuasive arguments or evidence based on a good faith belief as to why the rejection is in error. When evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter eligibility rejection.

Chapter Details:

The answer to this question can be found in the following supplement: Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection