MPEP Q & A 264: How do examiners evaluate integration into a practical application?



How do examiners evaluate integration into a practical application?


Examiners evaluate integration into a practical application by:

  • (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and
  • (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.

Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 2106.04(d) of the MPEP.  The following is a brief summary of section 2106.04(d).

2106.04(d)    Integration of a Judicial Exception Into A Practical Application

The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible).

Similarly, in a growing body of decisions, the Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field.

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