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III. Evaluating Applicant's Response

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.

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to a judicial exception or is directed to significantly more than a judicial exception, the rejection should be withdrawn.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.
• When an additional element is considered individually by the examiner, the additional element may be enough to qualify as "significantly more" if it meaningfully limits the judicial exception, improves another technology or technical field, improves the functioning of a computer itself, or adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application.

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.

• For example, generic computer components that individually perform merely generic computer functions (e.g., a CPU that performs mathematical calculations or a clock that produces time data) in some instances are able in combination to perform functions that are not generic computer functions and therefore amount to significantly more than an abstract idea (and are thus eligible).

If applicant properly challenges the examiner's findings but the examiner deems it appropriate to maintain the rejection, a rebuttal must be provided in the next Office action.

Several examples of appropriate examiner responses are provided below:

• If applicant challenges the identification of an abstract idea that was based on a court case and the challenge is not persuasive, an appropriate response would be an explanation as to why the abstract idea identified in the claim is similar to the concept in the cited case.
  • If the original rejection did not identify a Supreme Court or Federal Circuit decision in which a similar abstract idea was found and applicant challenges identification of the abstract idea, the examiner would need to point to a case in which a similar abstract idea was identified and explain why the abstract idea recited in the claim corresponds to the abstract idea identified in the case to maintain the rejection.
  • Citation to a case that supports the original rationale would not be considered a new ground of rejection, unless there is a change to the basic thrust of the rejection.
• If applicant responds to an examiner's assertion that something is well-known, routine, conventional activity with a specific argument or evidence that the additional elements in a claim are not well-understood, routine, conventional activities previously engaged in by those in the relevant art, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well-known, routine, conventional activities to those who work in the relevant field.
  
  • It is especially necessary for the examiner to fully reevaluate his or her position when such additional elements are not discussed in the specification as being known generic functions/components/activities or not treated by the courts as well-understood, routine, conventional activities.
  • If the rejection is to be maintained, the examiner should consider whether rebuttal evidence should be provided to further support the rejection and clarify the record for appeal.

Examples of well understood, routine, conventional claim limitations found by the Supreme Court, include:

• Alice Corp. provides an example of computer functions and components that have been treated as conventional.
  • The court describes the use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions as purely conventional computer functions and notes that nearly every computer has a "data processing system" with a "communications controller" and a "data storage unit."
• Mayo provides an example of data gathering that has been treated as well understood, routine, conventional activity.
  • The court explains that scientists routinely measured metabolites as part of their investigations into the relationships between metabolite levels and efficacy and toxicity of thiopurine compounds and finding that steps of administering a drug and determining metabolite levels consist of well-understood, routine, conventional activity already engaged in by the scientific community.

• If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements provide significantly more than the judicial exception.
  • Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp.
• If applicant argues that the claim is specific and does not preempt all applications of the exception, an appropriate response would be to explain that preemption is not a standalone test for eligibility.
  • Questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo, as explained by the Federal Circuit in OJP and Sequenom.
  • Moreover, while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible.