MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do?

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Question:

What should a subject matter eligibility rejection under Step 2 do?

Answer:

A subject matter eligibility rejection under Step 2 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;
  • 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.

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.