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I. Additional Examples

Additional examples were requested, particularly of eligible claims, and of examples illustrating the application of the significantly more inquiry in Step 2B.

• These examples provide additional eligible claims in various technologies, as well as sample analyses applying the Supreme Court and Federal Circuit’s considerations for determining whether a claim with additional elements amounts to significantly more than the judicial exception itself.
• The examples, along with the case law precedent identified in the training materials as pertinent to the considerations, will assist examiners in evaluating claim elements that can lead to eligibility (i.e., by amounting to significantly more) in a consistent manner across the corps.

Comments also stressed the importance of the 2014 IEG’s instruction that in Step 2B, examiners are to consider all additional elements both individually and in combination to determine whether the claim as a whole amounts to significantly more than an exception.

• It is agreed that this instruction is vital to ensuring the eligibility of many claims, because 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.
• The importance of considering the additional elements in combination was emphasized in examiner training, and innumerous examples.

 

» II. Further Explanation Of The Markedly Different Characteristics Analysis