2106.07(b) Evaluating Applicant’s Response [R-10.2019]

2106.07(b) Evaluating Applicant’s Response [R-10.2019]

After examiners identify and explain in the record the reasons why a claim is directed to an abstract idea, natural phenomenon, or law of nature without significantly more, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection.

In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: (i) 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, (or integrates the judicial exception into a practical application), (ii) present persuasive arguments based on a good faith belief as to why the rejection is in error and/or (iii) submit evidence traversing a subject matter eligibility rejection according to the procedures set forth in MPEP § 716.01 and 37 CFR 1.132. When evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter eligibility rejection. If applicant has amended the claim, examiners should determine the amended claim’s broadest reasonable interpretation and again perform the subject matter eligibility analysis.

If applicant’s claim amendment(s), evidence, 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to a judicial exception or is directed to significantly more than a judicial exception, the rejection should be withdrawn.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 integrates the judicial exception into a practical application or 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 integrate the judicial exception into a practical application or to qualify as “significantly more” if it meaningfully limits the judicial exception, e.g., it improves another technology or technical field, improves the functioning of a computer itself.

In addition, even if an element does not integrate a judicial exception into a practical application or amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still integrate or 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 integrate or 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.

• (1) If applicant challenges the identification of a tentative 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.
• (2) 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 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 their position when such additional elements are not discussed in the specification as being known generic functions/components/activities or are not treated by the courts as well-understood, routine, conventional activities. If the rejection is to be maintained, the examiner should consider whether evidence should be provided to further support the rejection and clarify the record for appeal. See MPEP § 2106.05(d) for examples of elements that the courts have found to be well understood, routine and conventional activity. If the examiner has taken official notice per item (D) of subsection III above that an element(s) is well-understood, routine, conventional activity, and the applicant challenges the examiner’s position, specifically stating that such element(s) is not well-understood, routine, conventional activity, the examiner must then provide one of the items discussed in paragraphs (A) through (C) of subsection III above, or an affidavit or declaration under 37 CFR 1.104(d)(2) setting forth specific factual statements and explanation to support the examiner’s position. See also MPEP § 2106.07(b), item (2).
• (3) If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim is integrated into a practical application or 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 integrate the judicial exception into a practical application or 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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) (“Just as Diehr could not save the claims in Alice, which were directed to ‘implement[ing] the abstract idea of intermediated settlement on a generic computer’, it cannot save OIP‘s claims directed to implementing the abstract idea of price optimization on a generic computer.”) (citations omitted).
• (4) If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis, e.g., to determine whether the claim is directed to an improvement to the functioning of a computer or to any other technology or technical field. If an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B whether the additional elements in combination (as well as individually) amount to an inventive concept, e.g., because they are more than the non-conventional and non-generic arrangement of known, conventional elements. Such reconsideration is appropriate because, although preemption is not a standalone test for eligibility, it remains the underlying concern that drives the two-part framework from Alice Corp. and Mayo (Steps 2A and 2B). Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016); Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed. Cir. 2015).