Eligibility Step 2B: Whether a Claim Amounts to Significantly More

I.

THE SEARCH FOR AN INVENTIVE

CONCEPT

The second part of the

Alice/Mayo

test is often referred to as a search for an inventive concept.

Alice Corp.

Pty. Ltd. v. CLS Bank Int'l,

573 U.S. 208, 217, 110 USPQ2d 1976, 1981

(2014) (citing

Mayo Collaborative Servs. v. Prometheus Labs.,

Inc.,

566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).

An inventive concept “cannot be furnished by the

unpatentable law of nature (or natural phenomenon or abstract idea) itself.”

Genetic Techs. Ltd. v. Merial LLC,

818 F.3d 1369, 1376, 118

USPQ2d 1541, 1546 (Fed. Cir. 2016). See also

Alice Corp.,

573 U.S.

at 21-18, 110 USPQ2d at 1981 (citing

Mayo,

566 U.S. at 78, 101

USPQ2d at 1968 (after determining that a claim is directed to a judicial exception,

“we then ask, ‘

[w]hat else

is there in the claims before us?”) (emphasis

added));

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”).

Instead, an “inventive concept” is furnished by an element or combination of elements

that is recited in the claim in addition to (beyond) the judicial exception, and is

sufficient to ensure that the claim as a whole amounts to significantly more than the

judicial exception itself.

Alice Corp.,

573 U.S. at 27-18, 110

USPQ2d at 1981 (citing

Mayo,

566 U.S. at 72-73, 101 USPQ2d at

1966).

Evaluating additional elements to determine whether

they amount to an inventive concept requires considering them both individually and

in combination to ensure that they amount to significantly more than the judicial

exception itself. Because this approach considers all claim elements, the Supreme

Court has noted that “it is consistent with the general rule that patent claims ‘must

be considered as a whole.’”

Alice Corp.,

573 U.S. at 218 n.3, 110

USPQ2d at 1981 (quoting

Diamond v. Diehr,

450 U.S. 175, 188, 209

USPQ 1, 8-9 (1981))

in combination to ensure that they amount to significantly more than the judicial

exception itself. Because this approach considers all claim elements, the Supreme

Court has noted that “it is consistent with the general rule that patent claims ‘must

be considered as a whole.’”

Alice Corp.,

573 U.S. at 218 n.3, 110

USPQ2d at 1981 (quoting

Diamond v. Diehr,

450 U.S. 175, 188, 209

USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly

important, because even if an additional element does not amount to significantly

more on its own, it can still amount to significantly more when considered in

combination with the other elements of the claim.

See, e.g., Rapid Litig.

Mgmt. v. CellzDirect,

827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed.

Cir. 2016) (process reciting combination of individually well-known freezing and

thawing steps was “far from routine and conventional” and thus eligible);

BASCOM Global Internet Servs. v. AT&T Mobility LLC,

827

F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be

found in the non-conventional and non-generic arrangement of components that are

individually well-known and conventional).

Although the courts often evaluate considerations such

as the conventionality of an additional element in the eligibility analysis, the

search for an inventive concept should not be confused with a novelty or

non-obviousness determination. See

Mayo,

566 U.S. at 91, 101

USPQ2d at 1973 (rejecting “the Government’s invitation to substitute

§§

102

,

103

, and

112

inquiries for the better established inquiry under

§ 101

”). As

made clear by the courts, the “‘novelty’ of any element or steps in a process, or

even of the process itself, is of

no relevance

in

determining whether the subject matter of a claim falls within the

§ 101

categories of possibly patentable subject matter.”

Intellectual Ventures I

v. Symantec Corp.,

838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir.

2016) (quoting

Diamond v. Diehr,

450 U.S. at 188–89, 209 USPQ at

9)

urts, the “‘novelty’ of any element or steps in a process, or

even of the process itself, is of

no relevance

in

determining whether the subject matter of a claim falls within the

§ 101

categories of possibly patentable subject matter.”

Intellectual Ventures I

v. Symantec Corp.,

838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir.

2016) (quoting

Diamond v. Diehr,

450 U.S. at 188–89, 209 USPQ at

9). See also

Synopsys, Inc. v. Mentor Graphics Corp.,

839 F.3d

1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a

new

abstract idea is still an abstract idea.

The search for a

§

101

inventive concept is thus distinct from demonstrating

§

102

novelty.”). In addition, the search for an inventive

concept is different from an obviousness analysis under

35 U.S.C.

103

. See,

e.g., BASCOM Global Internet v. AT&T

Mobility LLC,

827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir.

2016) (“The inventive concept inquiry requires more than recognizing that each claim

element, by itself, was known in the art. . . . [A]n inventive concept can be found

in the non-conventional and non-generic arrangement of known, conventional pieces.”).

Specifically, lack of novelty under

35 U.S.C. 102

or obviousness

under

35

U.S.C. 103

of a claimed invention does not necessarily indicate

that additional elements are well-understood, routine, conventional elements. Because

they are separate and distinct requirements from eligibility, patentability of the

claimed invention under

35 U.S.C. 102

and

103

with respect to the prior art is neither required for, nor

a guarantee of, patent eligibility under

35 U.S.C. 101

. The distinction

between eligibility (under

35 U.S.C. 101

) and patentability

over the art (under

35 U.S.C. 102

and/or

103

) is further discussed in

MPEP §

2106.05(d)

.

A

ate and distinct requirements from eligibility, patentability of the

claimed invention under

35 U.S.C. 102

and

103

with respect to the prior art is neither required for, nor

a guarantee of, patent eligibility under

35 U.S.C. 101

. The distinction

between eligibility (under

35 U.S.C. 101

) and patentability

over the art (under

35 U.S.C. 102

and/or

103

) is further discussed in

MPEP §

2106.05(d)

.

A.

Relevant Considerations For Evaluating Whether Additional Elements

Amount To An Inventive Concept

The Supreme Court has identified a number of

considerations as relevant to the evaluation of whether the claimed additional

elements amount to an inventive concept. The list of considerations here is not

intended to be exclusive or limiting. Additional elements can often be analyzed

based on more than one type of consideration and the type of consideration is of

no import to the eligibility analysis. Additional discussion of these

considerations, and how they were applied in particular judicial decisions, is

provided in in

MPEP § 2106.05(a) through (h)

.

Limitations that the courts have found to qualify

as “significantly more” when recited in a claim with a judicial exception include:

i. Improvements to the functioning of a

computer,

e.g.,

a modification of conventional Internet

hyperlink protocol to dynamically produce a dual-source hybrid webpage, as

discussed in

DDR Holdings, LLC v. Hotels.com, L.P.,

773

F.3d 1245, 1258-59, 113 USPQ2d 1097, 1106-07 (Fed. Cir. 2014) (see

MPEP § 2106.05(a)

);

ii. Improvements to any other technology or

technical field,

e.g.,

a modification of conventional

rubber-molding processes to utilize a thermocouple inside the mold to

constantly monitor the temperature and thus reduce under- and over-curing

problems common in the art, as discussed in

Diamond v.

Diehr,

450 U.S. 175, 191-92, 209 USPQ 1, 10 (1981) (see

MPEP § 2106.05(a)

);

iii

e

MPEP § 2106.05(a)

);

ii. Improvements to any other technology or

technical field,

e.g.,

a modification of conventional

rubber-molding processes to utilize a thermocouple inside the mold to

constantly monitor the temperature and thus reduce under- and over-curing

problems common in the art, as discussed in

Diamond v.

Diehr,

450 U.S. 175, 191-92, 209 USPQ 1, 10 (1981) (see

MPEP § 2106.05(a)

);

iii. Applying the judicial exception with, or by

use of, a particular machine,

e.g.,

a Fourdrinier machine

(which is understood in the art to have a specific structure comprising a

headbox, a paper-making wire, and a series of rolls) that is arranged in a

particular way to optimize the speed of the machine while maintaining

quality of the formed paper web, as discussed in

Eibel Process Co.

v. Minn. & Ont. Paper Co.,

261 U.S. 45, 64-65 (1923) (see

MPEP § 2106.05(b)

);

iv. Effecting a transformation or reduction of a

particular article to a different state or thing,

e.g.,

a

process that transforms raw, uncured synthetic rubber into precision-molded

synthetic rubber products, as discussed in

Diehr,

450

U.S. at 184, 209 USPQ at 21 (see

MPEP §

2106.05(c)

);

v. Adding a specific limitation other than what

is well-understood, routine, conventional activity in the field, or adding

unconventional steps that confine the claim to a particular useful

application,

e.g.,

a non-conventional and non-generic

arrangement of various computer components for filtering Internet content,

as discussed in

BASCOM Global Internet v. AT&T Mobility

LLC,

827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir.

2016) (see

MPEP § 2106.05(d)

); or

vi. Other meaningful limitations beyond

generally linking the use of the judicial exception to a particular

technological environment,

e.g.,

an immunization step

that integrates an abstract idea of data comparison into a specific process

of immunizing that lowers the risk that immunized patients will later

develop chronic immune-mediated diseases, as discussed in

Classen

Immunotherapies Inc. v

or

vi. Other meaningful limitations beyond

generally linking the use of the judicial exception to a particular

technological environment,

e.g.,

an immunization step

that integrates an abstract idea of data comparison into a specific process

of immunizing that lowers the risk that immunized patients will later

develop chronic immune-mediated diseases, as discussed in

Classen

Immunotherapies Inc. v. Biogen IDEC,

659 F.3d 1057, 1066-68,

100 USPQ2d 1492, 1499-1502 (Fed. Cir. 2011) (see

MPEP §

2106.05(e)

).

Limitations that the courts have found not to be

enough to qualify as “significantly more” when recited in a claim with a judicial

exception include:

i. Adding the words “apply it” (or an

equivalent) with the judicial exception, or mere instructions to implement

an abstract idea on a computer,

e.g.,

a limitation

indicating that a particular function such as creating and maintaining

electronic records is performed by a computer, as discussed in

Alice Corp.,

573 U.S. at 225-26, 110 USPQ2d at 1984

(see

MPEP § 2106.05(f)

);

ii. Simply appending well-understood, routine,

conventional activities previously known to the industry, specified at a

high level of generality, to the judicial exception,

e.g.,

a claim to an abstract idea requiring no more

than a generic computer to perform generic computer functions that are

well-understood, routine and conventional activities previously known to the

industry, as discussed in

Alice Corp.,

573 U.S. at 225,

110 USPQ2d at 1984 (see

MPEP §

2106.05(d)

);

iii. Adding insignificant extra-solution activity

to the judicial exception,

e.g.,

mere data gathering in

conjunction with a law of nature or abstract idea such as a step of

obtaining information about credit card transactions so that the information

can be analyzed by an abstract mental process, as discussed in

CyberSource v. Retail Decisions, Inc.,

654 F.3d 1366,

1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see

MPEP §

2106.05(g)

); or

iv

tivity

to the judicial exception,

e.g.,

mere data gathering in

conjunction with a law of nature or abstract idea such as a step of

obtaining information about credit card transactions so that the information

can be analyzed by an abstract mental process, as discussed in

CyberSource v. Retail Decisions, Inc.,

654 F.3d 1366,

1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see

MPEP §

2106.05(g)

); or

iv. Generally linking the use of the judicial

exception to a particular technological environment or field of use,

e.g.,

a claim describing how the abstract idea of

hedging could be used in the commodities and energy markets, as discussed in

Bilski v. Kappos,

561 U.S. 593, 595, 95 USPQ2d 1001,

1010 (2010) or a claim limiting the use of a mathematical formula to the

petrochemical and oil-refining fields, as discussed in

Parker v.

Flook,

437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978)

(

MPEP § 2106.05(h)

).

It is notable that mere physicality or tangibility

of an additional element or elements is not a relevant consideration in Step 2B.

As the Supreme Court explained in

Alice Corp.,

mere physical or

tangible implementation of an exception is not in itself an inventive concept and

does not guarantee eligibility:

The fact that a computer “necessarily exist[s]

in the physical, rather than purely conceptual, realm,” is beside the point.

There is no dispute that a computer is a tangible system (in

§ 101

terms, a “machine”), or that many computer-implemented claims are formally

addressed to patent-eligible subject matter. But if that were the end of the

§

101

inquiry, an applicant could claim any principle of

the physical or social sciences by reciting a computer system configured to

implement the relevant concept. Such a result would make the determination of

patent eligibility “depend simply on the draftsman’s art,”

Flook,

supra,

at 593, 98 S. Ct. 2522, 57 L. Ed. 2d 451, thereby

eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract

ideas are not patentable,’”

Myriad,

133 S. Ct. 1289, 186 L.

Ed

cial sciences by reciting a computer system configured to

implement the relevant concept. Such a result would make the determination of

patent eligibility “depend simply on the draftsman’s art,”

Flook,

supra,

at 593, 98 S. Ct. 2522, 57 L. Ed. 2d 451, thereby

eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract

ideas are not patentable,’”

Myriad,

133 S. Ct. 1289, 186 L.

Ed. 2d 124, 133).

Alice Corp.,

573 U.S. at 224,

110 USPQ2d at 1983-84 (alterations in original). See also

Genetic

Technologies Ltd. v. Merial LLC,

818 F.3d 1369, 1377, 118 USPQ2d

1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis “do not,

individually or in combination, provide sufficient inventive concept to render

claim 1 patent eligible” merely because they are physical steps). Conversely, the

presence of a non-physical or intangible additional element does not doom the

claims, because tangibility is not necessary for eligibility under the

Alice/Mayo

test.

Enfish, LLC v. Microsoft

Corp.,

822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) (“that the

improvement is not defined by reference to ‘physical’ components does not doom the

claims”). See also

McRO, Inc. v. Bandai Namco Games Am. Inc.,

837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a

process producing an intangible result (a sequence of synchronized, animated

characters) was eligible because it improved an existing technological process).

B.

Examples Of How Courts Conduct The Search For An Inventive

Concept

Alice Corp.

provides an example

of how courts conduct the significantly more analysis. In this case, the Supreme

Court analyzed claims to computer systems, computer readable media, and

computer-implemented methods, all of which described a scheme for mitigating

“settlement risk,” which is the risk that only one party to an agreed-upon

financial exchange will satisfy its obligation. In part one of the

Alice/Mayo

test, the Court determined that the claims were

directed to the abstract idea of mitigating settlement risk

lyzed claims to computer systems, computer readable media, and

computer-implemented methods, all of which described a scheme for mitigating

“settlement risk,” which is the risk that only one party to an agreed-upon

financial exchange will satisfy its obligation. In part one of the

Alice/Mayo

test, the Court determined that the claims were

directed to the abstract idea of mitigating settlement risk.

Alice

Corp.,

573 U.S. at 221, 110 USPQ2d at 1982. The Court then walked

through part two of the

Alice/Mayo

test, in which:

• The Court identified the additional

elements in the claim,

e.g.,

by noting that the method

claims recited steps of using a computer to “create electronic records,

track multiple transactions, and issue simultaneous instructions”, and that

the product claims recited hardware such as a “data processing system” with

a “communications controller” and a “data storage unit” (573 U.S. at 224-26,

110 USPQ2d at 1984-85);

• The Court considered the additional

elements individually, noting that all the computer functions were

“‘well-understood, routine, conventional activit[ies]’ previously known to

the industry," each step “does no more than require a generic computer to

perform generic computer functions”, and the recited hardware was “purely

functional and generic” (573 U.S. at 225-26, 110 USPQ2d at 1984-85); and

• The Court considered the additional

elements “as an ordered combination,” and determined that “the computer

components … ‘[a]dd nothing … that is not already present when the steps are

considered separately’” and simply recite intermediated settlement as

performed by a generic computer.” 573 U.S. at 225 (citing

Mayo,

566 U.S. at 79, 101 USPQ2d at 1972)

U.S. at 225-26, 110 USPQ2d at 1984-85); and

• The Court considered the additional

elements “as an ordered combination,” and determined that “the computer

components … ‘[a]dd nothing … that is not already present when the steps are

considered separately’” and simply recite intermediated settlement as

performed by a generic computer.” 573 U.S. at 225 (citing

Mayo,

566 U.S. at 79, 101 USPQ2d at 1972).

Based on this analysis, the Court concluded that

the claims amounted to “‘nothing significantly more’ than an instruction to apply

the abstract idea of intermediated settlement using some unspecified, generic

computer”, and therefore held the claims ineligible because they were directed to

a judicial exception and failed the second part of the

Alice/Mayo

test.

Alice Corp.,

573 U.S. at

225-27, 110 USPQ2d at 1984.

BASCOM

provides another example

of how courts conduct the significantly more analysis, and of the critical

importance of considering the additional elements in combination. In this case,

the Federal Circuit vacated a judgment of ineligibility because the district court

failed to properly perform the second step of the

Alice/Mayo

test when analyzing a claimed system for filtering content retrieved from an

Internet computer network.

BASCOM Global Internet v. AT&T Mobility

LLC,

827 F.3d 1341, 119 USPQ2d 1236 (Fed. Cir. 2016). The Federal

Circuit agreed with the district court that the claims were directed to the

abstract idea of filtering Internet content, and then walked through the district

court’s analysis in part two of the

Alice/Mayo

test, noting

that:

• The district court properly identified

the additional elements in the claims, such as a “local client computer,”

“remote ISP server,” “Internet computer network,” and “controlled access

network accounts” (827 F.3d at 1349, 119 USPQ2d at 1242);

• The district court properly considered the

additional elements individually, for example by consulting the

specification, which described each of the additional elements as

“well-known generic computer components” (82

in the claims, such as a “local client computer,”

“remote ISP server,” “Internet computer network,” and “controlled access

network accounts” (827 F.3d at 1349, 119 USPQ2d at 1242);

• The district court properly considered the

additional elements individually, for example by consulting the

specification, which described each of the additional elements as

“well-known generic computer components” (827 F.3d at 1349, 119 USPQ2d at

1242); and

• The district court should have considered

the additional elements in combination, because the “inventive concept

inquiry requires more than recognizing that each claim element, by itself,

was known in the art” (827 F.3d at 1350, 119 USPQ2d at 1242).

Based on this analysis, the Federal Circuit

concluded that the district court erred by failing to recognize that when

combined, an inventive concept may be found in the non-conventional and

non-generic arrangement of the additional elements, i.e., the installation of a

filtering tool at a specific location, remote from the end-users, with

customizable filtering features specific to each end user. 827 F.3d at 1350, 119

USPQ2d at 1242.

II.

ELIGIBILITY STEP 2B: WHETHER THE

ADDITIONAL ELEMENTS CONTRIBUTE AN “INVENTIVE CONCEPT”

As described in

MPEP § 2106

,

subsection III, Step 2B of the Office’s eligibility analysis is the second 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, 110 USPQ2d 1976, 1981 (2014) (citing

Mayo,

566 U.S. 66, 101

USPQ2d 1961 (2012)). 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

Pty. Ltd. v. CLS Bank Int'l,

573 U.S. 208,

217, 110 USPQ2d 1976, 1981 (2014) (citing

Mayo,

566 U.S. 66, 101

USPQ2d 1961 (2012)). 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 2B asks: Does the claim recite additional

elements that amount to significantly more than the judicial exception? Examiners

should answer this question by first identifying whether there are any additional

elements (features/limitations/steps) recited in the claim beyond the judicial

exception(s), and then evaluating those additional elements individually

and in combination

to determine whether

they contribute an inventive concept (

i.e.,

amount to

significantly more than the judicial exception(s)).

This evaluation is made with respect to the

considerations that the Supreme Court has identified as relevant to the eligibility

analysis, which are introduced generally in Part I.A of this section, and discussed

in detail in

MPEP § 2106.05(a) through (h)

. Many

of these considerations overlap, and often more than one consideration is relevant to

analysis of an additional element. Not all considerations will be relevant to every

element, or every claim. Because the evaluation in Step 2B is not a weighing test, it

is not important how the elements are characterized or how many considerations apply

from this list. It is important to evaluate the significance of the additional

elements relative to the invention, and to keep in mind the ultimate question of

whether the additional elements encompass an inventive concept

every

element, or every claim. Because the evaluation in Step 2B is not a weighing test, it

is not important how the elements are characterized or how many considerations apply

from this list. It is important to evaluate the significance of the additional

elements relative to the invention, and to keep in mind the ultimate question of

whether the additional elements encompass an inventive concept.

Although the conclusion of whether a claim is

eligible at Step 2B requires that all relevant considerations be evaluated, most of

these considerations were already evaluated in Step 2A Prong Two. Thus, in Step 2B,

examiners should:

• Carry over their identification of the

additional element(s) in the claim from Step 2A Prong Two;

• Carry over their conclusions from Step 2A

Prong Two on the considerations discussed in

MPEP §§ 2106.05(a) -

(c), (e) (f) and (h)

:

• Re-evaluate any additional element or

combination of elements that was considered to be insignificant extra-solution

activity per

MPEP § 2106.05(g)

, because if

such re-evaluation finds that the element is unconventional or otherwise more

than what is well-understood, routine, conventional activity in the field, this

finding may indicate that the additional element is no longer considered to be

insignificant; and

• Evaluate whether any additional element or

combination of elements are other than what is well-understood, routine,

conventional activity in the field, or simply append well-understood, routine,

conventional activities previously known to the industry, specified at a high

level of generality, to the judicial exception, per

MPEP §

2106.05(d)

ement is no longer considered to be

insignificant; and

• Evaluate whether any additional element or

combination of elements are other than what is well-understood, routine,

conventional activity in the field, or simply append well-understood, routine,

conventional activities previously known to the industry, specified at a high

level of generality, to the judicial exception, per

MPEP §

2106.05(d)

.

In the context of the flowchart in

MPEP §

2106

, subsection III, Step 2B determines whether:

• The claim as a whole does not amount to

significantly more than the exception itself (there is no inventive concept in

the claim) (Step 2B: NO) and thus is not eligible, warranting a rejection for

lack of subject matter eligibility and concluding the eligibility analysis; or

• The claim as a whole does amount to

significantly more than the exception (there is an inventive concept in the

claim) (Step 2B: YES), and thus is eligible at Pathway C, thereby concluding

the eligibility analysis.

Examiners should examine each claim for eligibility

separately, based on the particular elements recited therein. Claims should not be

judged to automatically stand or fall with similar claims in an application. For

instance, one claim may be ineligible because it is directed to a judicial exception

without amounting to significantly more, but another claim dependent on the first may

be eligible because it recites additional elements that do amount to significantly

more.

For more information on how to evaluate claims

reciting multiple judicial exceptions, see

MPEP §

2106.04

, subsection II.B.

If the claim as a whole does recite significantly

more than the exception itself, the claim is eligible (Step 2B: YES) at Pathway C,

and the eligibility analysis is complete

the first may

be eligible because it recites additional elements that do amount to significantly

more.

For more information on how to evaluate claims

reciting multiple judicial exceptions, see

MPEP §

2106.04

, subsection II.B.

If the claim as a whole does recite significantly

more than the exception itself, the claim is eligible (Step 2B: YES) at Pathway C,

and the eligibility analysis is complete. If there are no meaningful limitations in

the claim that transform the exception into a patent-eligible application, such that

the claim does not amount to significantly more than the exception itself, the claim

is not patent-eligible (Step 2B: NO) and should be rejected under

35 U.S.C. 101

.

See

MPEP

§ 2106.07

for information on how to formulate an

ineligibility rejection.