Subject Matter Eligibility Supplement 7:
Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection
| Official PDF » | 7 pgs; Examples and explanation for Subject Matter Eligibility. |
7. Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection
The purpose of this memorandum is to provide examination instructions to the Patent Examining Corps relating to subject matter eligibility of claims under 35 U.S.C. § 101. In particular, this memorandum addresses:
- (i) how examiners should formulate a subject matter eligibility rejection under§ 101, and
- (ii) how examiners should evaluate an applicant response to such a rejection.
I. Executive Summary
Following a finding of ineligibility under the two-part analysis described in the Interim Eligibility Guidance, when an examiner determines that a claim is directed to an abstract idea (Step 2A), the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.
- Similarly, when an examiner determines that a claim is directed to a law of nature or a natural phenomenon (Step 2A), the rejection should identify the law of nature or natural phenomenon as it is recited (i.e., set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.
For the second part of the analysis (Step 2B), the rejection should identify the additional elements in the claim and explain why the elements taken individually and in combination do not amount to a claim as a whole that is significantly more than the exception identified in Step 2A.
- For instance, when the examiner has concluded that certain claim elements recite well understood, routine, conventional activities in the relevant field of art, the rejection should explain why the courts have recognized, or those in the field would recognize, the additional elements when taken both individually and as a combination to be well-understood, routine, conventional activities.
Examiners are reminded that examples issued by the Office in conjunction with the Interim Eligibility Guidance are intended to show exemplary analyses only and should not be used as a basis for a subject matter eligibility rejection or relied upon in the same manner as a decision from a court.
When evaluating a response by applicant to a subject matter eligibility rejection, examiners must carefully consider all of applicant's arguments and evidence presented to rebut the rejection.
- If applicant properly challenges the examiner's findings, the rejection should be withdrawn or, if the examiner deems it appropriate to maintain the rejection, a rebuttal must be provided in the next Office action.
