MPEP Q & A 272: Limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception.

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Question:

Name a limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception.

Answer:

Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:

  • Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g.,a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer;
  • Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g.,a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp;
  • Adding insignificant extra-solution activity to the judicial exception, e.g.,mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc; or
  • Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g.,a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields.

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 2106.05 of the MPEP.  The following is a brief summary of section 2106.05.

2106.05  Eligibility Step 2B: Whether a Claim Amounts to Significantly More

This section covers eligibility step 2B which refers to whether a claim amounts to significantly more. Topics discussed include the search for an inventive concept and whether the additional elements contribute an ‘inventive concept’ . For instance, while abstract ideas, natural phenomena, and laws of nature are not eligible for patenting by themselves, claims that integrate these exceptions into an inventive concept are thereby transformed into patent-eligible inventions. 


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