# MPEP § 2106.05: Eligibility Step 2B: Whether a Claim Amounts to Significantly More

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2106.05

## Section

- **Citation:** MPEP § 2106.05
- **Heading:** Eligibility Step 2B: Whether a Claim Amounts to Significantly More
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2100 - Patentability / MPEP § 2106.05

## Text

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.

## Nearby sections

- [MPEP § 2103 Patent Examination Process](https://www.frixlaw.com/law-library/statutes/MPEP_S2103.md)
- [MPEP § 2104 Requirements of 35 U.S.C. 101](https://www.frixlaw.com/law-library/statutes/MPEP_S2104.md)
- [MPEP § 2104.01 Barred by Atomic Energy Act](https://www.frixlaw.com/law-library/statutes/MPEP_S2104.01.md)
- [MPEP § 2105 Patent Eligible Subject Matter — Living Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S2105.md)
- [MPEP § 2106 Patent Subject Matter Eligibility](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.md)
- [MPEP § 2106.01 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.01.md)
- [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_S2106.05. Check the current official text before relying on it. Not legal advice.