# MPEP § 2106.04: Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04

## Section

- **Citation:** MPEP § 2106.04
- **Heading:** Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2100 - Patentability / MPEP § 2106.04

## Text

I.
JUDICIAL EXCEPTIONS
Determining that a claim falls within one of the four
enumerated categories of patentable subject matter recited in
35 U.S.C. 101
(i.e., process, machine, manufacture, or composition of matter) in Step 1 does not
end the eligibility analysis, because claims directed to nothing more than abstract
ideas (such as a mathematical formula or equation), natural phenomena, and laws of
nature are not eligible for patent protection.
Diamond v. Diehr,
450 U.S. 175, 185, 209 USPQ 1, 7 (1981).
Alice Corp. Pty. Ltd. v. CLS Bank
Int'l,
573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing
Association for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013));
Diamond v.
Chakrabarty,
447 U.S. 303, 309, 206 USPQ 193, 197 (1980);
Parker v. Flook,
437 U.S. 584, 589, 198 USPQ 193, 197 (1978);
Gottschalk v. Benson,
409 U.S. 63, 67-68, 175 USPQ 673, 675
(1972). See also
Bilski v. Kappos,
561 U.S. 593, 601, 95 USPQ2d
1001, 1005-06 (2010) (“The Court’s precedents provide three specific exceptions to
§
101's
broad patent-eligibility principles: ‘laws of nature,
physical phenomena, and abstract ideas’”) (quoting
Chakrabarty,
447 U.S. at 309, 206 USPQ at 197 (1980)).
In addition to the terms “laws of nature,” “natural
phenomena,” and “abstract ideas,” judicially recognized exceptions have been
described using various other terms, including “physical phenomena,” “products of
nature,” “scientific principles,” “systems that depend on human intelligence alone,”
“disembodied concepts,” “mental processes,” and “disembodied mathematical algorithms
and formulas.” It should be noted that there are no bright lines between the types of
exceptions, and that many of the concepts identified by the courts as exceptions can
fall under several exceptions. For example, mathematical formulas are considered to
be a judicial exception as they express a scientific truth, but have been labelled by
the courts as both abstract ideas and laws of nature
rithms
and formulas.” It should be noted that there are no bright lines between the types of
exceptions, and that many of the concepts identified by the courts as exceptions can
fall under several exceptions. For example, mathematical formulas are considered to
be a judicial exception as they express a scientific truth, but have been labelled by
the courts as both abstract ideas and laws of nature. Likewise, “products of nature”
are considered to be an exception because they tie up the use of naturally occurring
things, but have been labelled as both laws of nature and natural phenomena. Thus, it
is sufficient for this analysis for the examiner to identify that the claimed concept
(the specific claim limitation(s) that the examiner believes may recite an exception)
aligns with at least one judicial exception.
The Supreme Court has explained that the judicial
exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural
phenomena are “the basic tools of scientific and technological work”, and are thus
excluded from patentability because “monopolization of those tools through the grant
of a patent might tend to impede innovation more than it would tend to promote it.”
Alice Corp.,
573 U.S. at 216, 110 USPQ2d at 1980 (quoting
Myriad,
569 U.S. at 589, 106 USPQ2d at 1978 and
Mayo
Collaborative Servs. v. Prometheus Labs. Inc.,
566 U.S. 66, 71, 101
USPQ2d 1961, 1965 (2012)). The Supreme Court’s concern that drives this “exclusionary
principle” is pre-emption.
Alice Corp.,
573 U.S. at 216, 110
USPQ2d at 1980. The Court has held that a claim may not preempt abstract ideas, laws
of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a
particular mathematical formula such as the Arrhenius equation). See,
e.g.,
Mayo,
566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 (claims
directed to “narrow laws that may have limited applications” held ineligible);
Flook,
437 U.S
d at 1980. The Court has held that a claim may not preempt abstract ideas, laws
of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a
particular mathematical formula such as the Arrhenius equation). See,
e.g.,
Mayo,
566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 (claims
directed to “narrow laws that may have limited applications” held ineligible);
Flook,
437 U.S. at 589-90, 198 USPQ at 197 (claims that did not
“wholly preempt the mathematical formula” held ineligible). This is because such a
patent would “in practical effect [] be a patent on the [abstract idea, law of nature
or natural phenomenon] itself.”
Benson,
409 U.S. at 71- 72, 175
USPQ at 676. The concern over preemption was expressed as early as 1852. See
Le Roy v. Tatham,
55 U.S. (14 How.) 156, 175 (1852) (“A
principle, in the abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them an exclusive
right.”).
While preemption is the concern underlying the
judicial exceptions, it is not a standalone test for determining eligibility.
Rapid Litig. Mgmt. v. CellzDirect, Inc.,
827 F.3d 1042, 1052,
119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent
in and resolved by the two-part framework from
Alice Corp. and
Mayo
(the
Alice/Mayo
test referred to by the Office
as Steps 2A and 2B).
Synopsys, Inc. v. Mentor Graphics Corp.,
839
F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016);
Ariosa Diagnostics,
Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed.
Cir. 2015). It is necessary to evaluate eligibility using the
Alice/Mayo
test, because while a preemptive claim may be
ineligible, the absence of complete preemption does not demonstrate that a claim is
eligible.
Diamond v. Diehr,
450 U.S. 175, 191-92 n.14, 209 USPQ 1,
10-11 n.14 (1981) (“We rejected in
Flook
the argument that because
all possible uses of the mathematical formula were not pre-empted, the claim should
be eligible for patent protection”)
g the
Alice/Mayo
test, because while a preemptive claim may be
ineligible, the absence of complete preemption does not demonstrate that a claim is
eligible.
Diamond v. Diehr,
450 U.S. 175, 191-92 n.14, 209 USPQ 1,
10-11 n.14 (1981) (“We rejected in
Flook
the argument that because
all possible uses of the mathematical formula were not pre-empted, the claim should
be eligible for patent protection”). See also
Synopsys v. Mentor
Graphics,
839 F.3d at 1150, 120 USPQ2d at 1483;
FairWarning IP,
LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098, 120 USPQ2d 1293, 1299
(Fed. Cir. 2016);
Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1320-21, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016);
Sequenom,
788 F.3d at 1379, 115 USPQ2d at 1158. Several Federal
Circuit decisions, however, have noted the absence of preemption when finding claims
eligible under the
Alice/Mayo
test.
McRO, Inc. v. Bandai
Namco Games Am. Inc.,
837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-03
(Fed. Cir. 2016);
Rapid Litig. Mgmt. v. CellzDirect, Inc.,
827
F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016);
BASCOM Global
Internet v. AT&T Mobility, LLC,
827 F.3d 1341, 1350-52, 119 USPQ2d
1236, 1243-44 (Fed. Cir. 2016).
The Supreme Court’s decisions make it clear that
judicial exceptions need not be old or long-prevalent, and that even newly discovered
or novel judicial exceptions are still exceptions. For example, the mathematical
formula in
Flook,
the laws of nature in
Mayo,
and the isolated DNA in
Myriad
were all novel or newly discovered,
but nonetheless were considered by the Supreme Court to be judicial exceptions
because they were “‘basic tools of scientific and technological work’ that lie beyond
the domain of patent protection.”
Myriad,
569 U.S. 576, 589, 106
USPQ2d at 1976, 1978 (noting that
Myriad
discovered the BRCA1 and
BRCA1 genes and quoting
Mayo,
566 U.S. 71, 101 USPQ2d at 1965);
Flook,
437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of
the mathematical algorithm is not a determining factor at all”);
Mayo,
566 U.S
asic tools of scientific and technological work’ that lie beyond
the domain of patent protection.”
Myriad,
569 U.S. 576, 589, 106
USPQ2d at 1976, 1978 (noting that
Myriad
discovered the BRCA1 and
BRCA1 genes and quoting
Mayo,
566 U.S. 71, 101 USPQ2d at 1965);
Flook,
437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of
the mathematical algorithm is not a determining factor at all”);
Mayo,
566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that
the claims embody the researcher's discoveries of laws of nature). The Supreme
Court’s cited rationale for considering even “just discovered” judicial exceptions as
exceptions stems from the concern that “without this exception, there would be
considerable danger that the grant of patents would ‘tie up’ the use of such tools
and thereby ‘inhibit future innovation premised upon them.’”
Myriad,
569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting
Mayo,
566 U.S. at 86, 101 USPQ2d at 1971). See also
Myriad,
569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the
§101
inquiry.”). The Federal Circuit has also applied this
principle, for example, when holding a concept of using advertising as an exchange or
currency to be an abstract idea, despite the patentee’s arguments that the concept
was “new”.
Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 714-15,
112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014).
Cf. Synopsys, Inc. v. Mentor
Graphics Corp.,
839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir.
2016) (“a
new
abstract idea is still an abstract
idea”) (emphasis in original).
For a detailed discussion of abstract ideas, see
MPEP
§ 2106.04(a)
; for a detailed discussion of laws of nature,
natural phenomena and products of nature, see
MPEP §
2106.04(b)
.
II
USPQ2d 1750, 1753-54 (Fed. Cir. 2014).
Cf. Synopsys, Inc. v. Mentor
Graphics Corp.,
839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir.
2016) (“a
new
abstract idea is still an abstract
idea”) (emphasis in original).
For a detailed discussion of abstract ideas, see
MPEP
§ 2106.04(a)
; for a detailed discussion of laws of nature,
natural phenomena and products of nature, see
MPEP §
2106.04(b)
.
II.
ELIGIBILITY STEP 2A: WHETHER A CLAIM
IS DIRECTED TO A JUDICIAL EXCEPTION
As described in
MPEP § 2106
,
subsection III, Step 2A of the Office’s eligibility analysis is the first part of the
Alice/Mayo
test,
i.e.,
the Supreme Court’s
“framework for distinguishing patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts.”
Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
573 U.S. 208,
217-18, 110 USPQ2d 1976, 1981 (2014) (citing
Mayo,
566 U.S. at
77-78, 101 USPQ2d at 1967-68). Like the other steps in the eligibility analysis,
evaluation of this step should be made after determining what the inventor has
invented by reviewing the entire application disclosure and construing the claims in
accordance with their broadest reasonable interpretation. See
MPEP § 2106
,
subsection II for more information about the importance of understanding what has
been invented, and
MPEP § 2111
for more information about the broadest
reasonable interpretation.
Step 2A asks: Is the claim directed to a law of
nature, a natural phenomenon (product of nature) or an abstract idea? In the context
of the flowchart in
MPEP § 2106
, subsection III, Step 2A determines whether:
• The claim as a whole is not directed to a
judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby
concluding the eligibility analysis; or
• The claim as a whole is directed to a
judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B
to determine if the claim as a whole amounts to significantly more than the
exception itself.
A
p 2A determines whether:
• The claim as a whole is not directed to a
judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby
concluding the eligibility analysis; or
• The claim as a whole is directed to a
judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B
to determine if the claim as a whole amounts to significantly more than the
exception itself.
A.
Step 2A Is a Two-Prong Inquiry
Step 2A is a two-prong inquiry, in which examiners
determine in Prong One whether a claim recites a judicial exception, and if so, then
determine in Prong Two if the recited judicial exception is integrated into a
practical application of that exception. Together, these prongs represent the first
part of the
Alice/Mayo
test, which determines whether a claim is
directed to a judicial exception.
The flowchart below depicts the two-prong analysis
that is performed in order to answer the Step 2A inquiry.
1.
Prong One
Prong One asks does the claim recite an abstract
idea, law of nature, or natural phenomenon? In Prong One examiners evaluate
whether the claim recites a judicial exception, i.e. whether a law of nature,
natural phenomenon, or abstract idea is
set forth
or
described
in the claim. While the terms "set forth" and
"described" are thus both equated with "recite", their different language is
intended to indicate that there are two ways in which an exception can be recited
in a claim. For instance, the claims in
Diehr,
450 U.S. at 178
n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical
equation in the repetitively calculating step, and the claims in
Mayo,
566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012),
clearly stated laws of nature in the wherein clause, such that the claims “set
forth” an identifiable judicial exception. Alternatively, the claims in
Alice Corp.,
573 U.S
s in
Diehr,
450 U.S. at 178
n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical
equation in the repetitively calculating step, and the claims in
Mayo,
566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012),
clearly stated laws of nature in the wherein clause, such that the claims “set
forth” an identifiable judicial exception. Alternatively, the claims in
Alice Corp.,
573 U.S. at 218, 110 USPQ2d at 1982, described
the concept of intermediated settlement without ever explicitly using the words
“intermediated” or “settlement.”
The Supreme Court has held that Section 101
contains an implicit exception for ‘‘[l]aws of nature, natural phenomena, and
abstract ideas,’’ which are ‘‘the basic tools of scientific and technological
work.’’
Alice Corp.,
573 U.S. at 216, 110 USPQ2d at 1980
(citing
Mayo,
566 US at 71, 101 USPQ2d at 1965). Yet, the Court
has explained that ‘‘[a]t some level, all inventions embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas,’’ and has
cautioned ‘‘to tread carefully in construing this exclusionary principle lest it
swallow all of patent law.’’
Id.
See also
Enfish, LLC
v. Microsoft Corp.,
822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed.
Cir. 2016) (“The ‘directed to’ inquiry, therefore, cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves a law of
nature and/or natural phenomenon”). Examiners should accordingly be careful to
distinguish claims that
recite
an exception (which require further
eligibility analysis) and claims that merely
involve
an exception
(which are eligible and do not require further eligibility analysis).
An example of a claim that recites a judicial
exception is “A machine comprising elements that operate in accordance with F=ma.”
This claim sets forth the principle that force equals mass times acceleration
(F=ma) and therefore recites a law of nature exception
er
eligibility analysis) and claims that merely
involve
an exception
(which are eligible and do not require further eligibility analysis).
An example of a claim that recites a judicial
exception is “A machine comprising elements that operate in accordance with F=ma.”
This claim sets forth the principle that force equals mass times acceleration
(F=ma) and therefore recites a law of nature exception. Because F=ma represents a
mathematical formula, the claim could alternatively be considered as reciting an
abstract idea. Because this claim recites a judicial exception, it requires
further analysis in Prong Two in order to answer the Step 2A inquiry. An example
of a claim that merely involves, or is based on, an exception is a claim to “A
teeter-totter comprising an elongated member pivotably attached to a base member,
having seats and handles attached at opposing sides of the elongated member.” This
claim is based on the concept of a lever pivoting on a fulcrum, which involves the
natural principles of mechanical advantage and the law of the lever. However, this
claim does not recite these natural principles and therefore is not directed to a
judicial exception (Step 2A: NO). Thus, the claim is eligible at Pathway B without
further analysis.
If the claim recites a judicial exception
(
i.e.,
an abstract idea enumerated in
MPEP §
2106.04(a)
, a law of nature, or a natural phenomenon),
the claim requires further analysis in Prong Two. If the claim does not recite a
judicial exception (a law of nature, natural phenomenon, or abstract idea), then
the claim cannot be directed to a judicial exception (Step 2A: NO), and thus the
claim is eligible at Pathway B without further analysis.
For more information how to determine if a claim
recites an abstract idea, see
MPEP §
2106.04(a)
. For more information on how to determine if
a claim recites a law of nature or natural phenomenon, see
MPEP §
2106.04(b)
. For more information on how to determine if
a claim recites a product of nature, see
MPEP §
2106.04(c)
.
2
, and thus the
claim is eligible at Pathway B without further analysis.
For more information how to determine if a claim
recites an abstract idea, see
MPEP §
2106.04(a)
. For more information on how to determine if
a claim recites a law of nature or natural phenomenon, see
MPEP §
2106.04(b)
. For more information on how to determine if
a claim recites a product of nature, see
MPEP §
2106.04(c)
.
2.
Prong Two
Prong Two asks does the claim recite additional
elements that integrate the judicial exception into a practical application? In
Prong Two, examiners evaluate whether the claim as a whole integrates the
exception into a practical application of that exception. If the additional
elements in the claim integrate the recited exception into a practical application
of the exception, then the claim is not directed to the judicial exception (Step
2A: NO) and thus is eligible at Pathway B. This concludes the eligibility
analysis. If, however, the additional elements do not integrate the exception into
a practical application, then the claim is directed to the recited judicial
exception (Step 2A: YES), and requires further analysis under Step 2B (where it
may still be eligible if it amounts to an ‘‘inventive concept’’). For more
information on how to evaluate whether a judicial exception is integrated into a
practical application, see
MPEP § 2106.04(d)(2)
.
The mere inclusion of a judicial exception such as
a mathematical formula (which is one of the mathematical concepts identified as an
abstract idea in
MPEP § 2106.04(a)
) in a claim
means that the claim “recites” a judicial exception under Step 2A Prong One.
However, mere recitation of a judicial exception does not mean that the claim is
“directed to” that judicial exception under Step 2A Prong Two. Instead, under
Prong Two, a claim that recites a judicial exception is not directed to that
judicial exception, if the claim as a whole integrates the recited judicial
exception into a practical application of that exception
eption under Step 2A Prong One.
However, mere recitation of a judicial exception does not mean that the claim is
“directed to” that judicial exception under Step 2A Prong Two. Instead, under
Prong Two, a claim that recites a judicial exception is not directed to that
judicial exception, if the claim as a whole integrates the recited judicial
exception into a practical application of that exception. Prong Two thus
distinguishes claims that are “directed to” the recited judicial exception from
claims that are not “directed to” the recited judicial exception.
Because a judicial exception is not eligible
subject matter,
Bilski,
561 U.S. at 601, 95 USPQ2d at 1005-06
(quoting
Chakrabarty,
447 U.S. at 309, 206 USPQ at 197 (1980)),
if there are no additional claim elements besides the judicial exception, or if
the additional claim elements merely recite another judicial exception, that is
insufficient to integrate the judicial exception into a practical application.
See,
e.g., RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322,
1327, 122 USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea (encoding and decoding) does not render the claim
non-abstract”);
Genetic Techs. Ltd. v. Merial LLC,
818 F.3d
1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility “cannot be
furnished by the unpatentable law of nature (or natural phenomenon or abstract
idea) itself.”). For a claim reciting a judicial exception to be eligible, the
additional elements (if any) in the claim must “transform the nature of the claim”
into a patent-eligible application of the judicial exception,
Alice
Corp.,
573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in
Step 2B. If there are no additional elements in the claim, then it cannot be
eligible
on or abstract
idea) itself.”). For a claim reciting a judicial exception to be eligible, the
additional elements (if any) in the claim must “transform the nature of the claim”
into a patent-eligible application of the judicial exception,
Alice
Corp.,
573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in
Step 2B. If there are no additional elements in the claim, then it cannot be
eligible. In such a case, after making the appropriate rejection (see
MPEP § 2106.07
for more information on formulating a
rejection for lack of eligibility), it is a best practice for the examiner to
recommend an amendment, if possible, that would resolve eligibility of the claim.
B.
Evaluating Claims Reciting Multiple Judicial
Exceptions
A claim may recite multiple judicial exceptions.
For example, claim 4 at issue in
Bilski v. Kappos,
561 U.S.
593, 95 USPQ2d 1001 (2010) recited two abstract ideas, and the claims at issue in
Mayo Collaborative Servs. v. Prometheus Labs. Inc.,
566 U.S.
66, 101 USPQ2d 1961 (2012) recited two laws of nature. However, these claims were
analyzed by the Supreme Court in the same manner as claims reciting a single
judicial exception, such as those in
Alice Corp.,
573 U.S. 208,
110 USPQ2d 1976.
During examination, examiners should apply the
same eligibility analysis to all claims regardless of the number of exceptions
recited therein. Unless it is clear that a claim recites distinct exceptions, such
as a law of nature and an abstract idea, care should be taken not to parse the
claim into multiple exceptions, particularly in claims involving abstract ideas.
Accordingly, if possible examiners should treat the claim for Prong Two and Step
2B purposes as containing a single judicial exception.
In some claims, the multiple exceptions are
distinct from each other,
e.g.,
a first limitation describes a
law of nature, and a second limitation elsewhere in the claim recites an abstract
idea
multiple exceptions, particularly in claims involving abstract ideas.
Accordingly, if possible examiners should treat the claim for Prong Two and Step
2B purposes as containing a single judicial exception.
In some claims, the multiple exceptions are
distinct from each other,
e.g.,
a first limitation describes a
law of nature, and a second limitation elsewhere in the claim recites an abstract
idea. In these cases, for purposes of examination efficiency, examiners should
select one of the exceptions and conduct the eligibility analysis for that
selected exception. If the analysis indicates that the claim recites an additional
element or combination of elements that integrate the selected exception into a
practical application or that amount to significantly more than the selected
exception, then the claim should be considered patent eligible. On the other hand,
if the claim does not recite any additional element or combination of elements
that integrate the selected exception into a practical application, and also does
not recite any additional element or combination of elements that amounts to
significantly more than the selected exception, then the claim should be
considered ineligible.
University of Utah Research Foundation v. Ambry
Genetics,
774 F.3d 755, 762, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014)
(because claims did not amount to significantly more than the recited abstract
idea, court “need not decide” if claims also recited a law of nature).
In other claims, multiple abstract ideas, which
may fall in the same or different groupings, or multiple laws of nature may be
recited. In these cases, examiners should not parse the claim. For example, in a
claim that includes a series of steps that recite mental steps as well as a
mathematical calculation, an examiner should identify the claim as reciting both a
mental process and a mathematical concept for Step 2A Prong One to make the
analysis clear on the record
different groupings, or multiple laws of nature may be
recited. In these cases, examiners should not parse the claim. For example, in a
claim that includes a series of steps that recite mental steps as well as a
mathematical calculation, an examiner should identify the claim as reciting both a
mental process and a mathematical concept for Step 2A Prong One to make the
analysis clear on the record. However, if possible, the examiner should consider
the limitations together as a single abstract idea for Step 2A Prong Two and Step
2B (if necessary) rather than as a plurality of separate abstract ideas to be
analyzed individually.

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- [MPEP § 2106.02 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.02.md)
- [MPEP § 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.03.md)
- [MPEP § 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04.md)
- [MPEP § 2106.04(a) Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a).md)
- [MPEP § 2106.04(a)(1) Examples of Claims That Do Not Recite Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(1).md)
- [MPEP § 2106.04(a)(2) Abstract Idea Groupings](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(2).md)
- [MPEP § 2106.04(a)(3) Tentative Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(3).md)
- [MPEP § 2106.04(b) Laws of Nature, Natural Phenomena & Products of Nature](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(b).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04. Check the current official text before relying on it. Not legal advice.