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2106.04(a)(3)   Tentative Abstract Ideas

MPEP SECTION SUMMARY This section covers examples of concepts the courts have identified as tentative abstract ideas. This happens in rare circumstances where an examiner believes a claim limitation should be treated as an abstract idea even though it does not fall within any of the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2) (i.e., mathematical concepts, certain methods of organizing human activity, mental processes). This type of claim limitation is referred to as a "tentative abstract idea."

In such rare circumstances where an examiner believes a claim limitation should be treated as an abstract idea even though it does not fall within any of the groupings of abstract ideas, the examiner should evaluate the claim under the subject matter eligibility framework:

• If the claim as a whole integrates the tentative abstract idea into a practical application, the claim is not directed to a judicial exception (Step 2A; NO) and thus is eligible at Pathway B.
  • This concludes the eligibility analysis.
• If the claim as a whole does not integrate the tentative abstract idea into a practical application, then the claim is directed to a judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B.
  • At Step 2B, if the claim as a whole provides an inventive concept (Step 2B: YES), the claim is eligible at Pathway C.
  • This concludes the eligibility analysis.
• If the claim as a whole does not provide an inventive concept (Step 2B: NO), the application should be brought to the attention of the Technology Center (TC) director.
  • A rejection of a claim reciting a tentative abstract idea must be approved by the TC director (which approval will be indicated in the file record of the application) and must provide a justification for why such claim limitation is being treated as reciting an abstract idea.

The TC Director will give approval for a Step 2B subject matter eligibility rejection of a claim reciting a tentative abstract idea. .

In response to a Step 2B rejection of a claim reciting a tentative abstract idea, an interview with the examiner may be conducted, which may help advance prosecution and identify patent eligible subject matter.

• For applications in which an abstract idea has been identified using the tentative abstract idea procedure, an interview with the TC Director that provided approval is not necessary because the examiner retains the authority to withdraw or maintain a rejection upon consideration of applicant’s reply.
• The examiner is not required to obtain TC Director approval to withdraw or maintain such a § 101 subject matter eligibility rejection.

 

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