Overcoming Section 101 Rejections for Patent Eligible Subject Matter
Securing a patent in the U.S. can be challenging—especially when your invention is met with a Section 101 rejection for not being “patent-eligible.” These rejections typically assert that the claimed subject matter is abstract and lacks an “inventive concept.” However, with a strategic approach, this rejection can be overcome.
This article helps you understand and address Section 101 rejections, particularly if you’re a founder or inventor in the tech or innovation space.
To overcome a Section 101 (patent eligibility) rejection, focus on demonstrating how your invention is more than just an abstract idea, but rather, provides an “inventive concept”, claimed as a process or apparatus. Also, the claimed process or apparatus should provide a practical application with specific, technical improvements.
The Legal Framework: The Alice-Mayo Test
Section 101 patent eligibility is determined using the Alice-Mayo test, a two-step framework defined by the U.S. Supreme Court and established in Alice Corporation v. CLS Bank International, 573 U.S. 208 (2014) and Mayo Collab. Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66, 70 (2012).:
- Is the claim directed to a patent ineligible concept? (e.g., abstract ideas, laws of nature, natural phenomena)
- Does the claim include an “inventive concept”? In other words, do the claim elements, on their own or as a combination, add something significantly more than the abstract idea?
The first step in the Section 101 patent eligibility analysis is to determine whether the claims in your application are directed to a type of subject matter that is not eligible for a patent—such as an abstract idea, a law of nature, or a natural phenomenon.
If the claims are found to involve such ineligible subject matter, the analysis then moves to the second step. This step examines whether the elements of each claim—both individually and as a whole (i.e., “as an ordered combination”)—contain an “inventive concept.” This means the claim must include something that ensures the patent does significantly more than merely cover the ineligible idea itself. The invention must apply the concept in a meaningful and practical way.
As a starting point, a claimed process should not be something that can simply be performed using “pencil and paper.” It cannot consist solely of mental steps or a series of general-purpose actions—like collecting data, organising human activity, or using broadly defined processes with no technical specificity.
In addition, the claim should not “preempt” or monopolise all practical uses of a natural law or phenomenon. In other words, it should not cover such a wide scope that it effectively prevents others from applying the law or phenomenon in any useful way.
For example, in Ultramercial v. Hulu, the Federal Circuit explained that the patent in question did not just claim a mathematical formula, a set of mental steps, or another abstract idea. Instead, it described a particular method—a practical application of a broader concept—which made the invention patent-eligible.
Successfully overcoming a Section 101 rejection requires both a broad understanding of why your invention was rejected and a specific, well-structured response. The following strategies can help guide that process.
Broad View
- Understand the Examiner’s Logic: Carefully review the examiner’s reasoning behind the Section 101 rejection to understand their interpretation of the “abstract idea”. Next, determine if the examiner followed the appropriate procedures (like the Alice test).
- Interview the Examiner: The interview allows you to gain valuable insight into the examiner’s rationale for the Section 101 rejection, allowing you to address the examiner’s points in the Section 101 rejection. Without the interview, you may be arguing points which are not relevant to the examiner, and the Section 101 rejection will return on the next office action. The Examiner may offer specific suggestions on claim amendments or arguments for patent eligibility.
Specific Suggestions
- Bring out Statutory Subject matter
For Method Claims: Frame your claims clearly as a process. Demonstrate how data is transformed. For example, MRI takes tissue and transforms it to numbers, which is in turn transformed into a gray scale to determine the type/health of tissue.
For Apparatus/Systems: Add concrete machine elements or components. Ensure these structures are described in your specification. The machine elements should be in a unique combination and perform a technical improvement over the present state of the art.
In both cases, provide specific process steps performed by machine elements, which are the actual steps, and not results of the process or product.
Claim a “Practical Application”
A ”practical application” is something that is not generic, but specific, and a “real world” product or process, e.g., detecting a fraudulent credit card transaction, detecting an anomaly on a semiconductor wafer with a specifically defined technique, a specific arrangement of computer elements for content filtering. Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
Show technical improvements: Emphasize how your invention provides measurable enhancements, like faster processing times or increased efficiency.
Solve a Technical Problem:
Address a challenge that is specific to a technical field, especially one that could not exist without that technology (like the DDR Holdings internet problem).
Focus on impracticality for humans: Explain how your invention performs tasks that are difficult or impossible for humans to do. In view of recent case law, this argument should be used with other arguments, if possible.
Example Practical Applications:
In the case of Invention 1 – Diamond v Diehr – the subject matter was a process for curing synthetic rubber. The claim did not attempt to patent a mathematical formula—in this case, the Arrhenius Equation—but rather a specific, multi-step industrial process. It involved continuously measuring the temperature inside the rubber mold, feeding those real-time measurements into the Arrhenius Equation, and using the output to dynamically recalculate the optimal cure time. This iterative method transformed the uncured rubber into a fully cured product, addressing a real-world technological challenge in the rubber manufacturing industry.
The claim’s validity rested on its practical application of a scientific principle to achieve a tangible result. The process steps were clearly performed by machine components and not merely conceptual. This example underscores the importance of describing how a process or system uses specific, measurable inputs and machine-executed operations to deliver a technical improvement—rather than merely claiming an outcome or formula in the abstract.
In the case of Invention 2, the subject matter was a system for creating a composite web page that prevents users from being immediately redirected to a third-party merchant site after clicking on an online advertisement. This invention, as upheld in DDR Holdings v. Hotels.com, did not merely replicate a traditional business model in a digital context. Instead, it addressed a problem that is inherently tied to the structure and function of internet-based systems—a problem that did not exist prior to the advent of the web.
The claimed system generated a hybrid webpage that preserved the “look and feel” of the host website while integrating and displaying content from the merchant site. This created a seamless user experience and solved a technical issue associated with online navigation and user engagement. The system’s implementation required specific steps executed by computer systems, distinguishing it from abstract ideas and demonstrating a practical application of computer technology to improve internet functionality
Analogize The Claims To USPTO Accepted Patent-Eligible Subject Matter
Compare your amended claims to successful cases where similar inventions were found patent eligible. Use legal precedents to support your arguments and demonstrate that your invention is more than just an abstract idea.
- Image processing*
- Geolocation using GPS hardware*
- Triggered retrieval of stock quotes**
- GUI that automatically relocates obscured information**
- Computer malware scanning and removal
- For example, isolating and removing malicious code from email**
- A unique combination of inertial sensors and the use of a mathematical equation for calculating the location and orientation of an object relative to a moving platform. Thales Visionix, Inc. v. US, 850 F.3d 1343 (Fed. Cir. 2017)
- Other eligible categories – look to USPTO Guidance of July 2015 (Available at www.uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf)
* Federal Register, Vol. 79, No. 241, Dec. 16, 2014
** USPTO Guidance of July 2015, Examples 1-36 (cited above)
See Also, 1) USPTO Guidance of January 2019, Examples 37-42, 2) USPTO Guidance of October 2019, Examples 43-46, and 3) USPTO Guidance of 2024 AI Examples 47 through 49 (effective July 17, 2024)
Provide Arguments To Support The Claims
To support the validity of a patent claim under U.S. law, particularly in the context of the Supreme Court’s Alice framework for determining patent eligibility, it is essential to provide clear arguments grounded in case law and technical substance.
First, claims that are directed to improvements in computing or other forms of technology are generally not considered “abstract ideas” under the first prong of the Alice test. This principle was firmly established in Enfish, LLC v. Microsoft Corp., where the Federal Circuit emphasized that innovations improving the way computers operate are patent eligible.
Similarly, the Federal Circuit in McRO, Inc. v. Bandai Namco Games America, Inc. held that claims reciting a specific and ordered combination of rules that enhanced existing technological processes were also patentable. This case further clarified that if a claimed method—though it might be theoretically performable by a human—has not been shown to have ever been carried out mentally in the same manner, it should not be treated as an abstract idea when implemented by a computer.
The court in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC went on to explain that even when a claim incorporates known and conventional components, its eligibility under §101 can be preserved if those components are arranged in a non-generic and inventive way. In that case, the court upheld a patent where the claim described a specific, technical configuration for filtering internet content—a solution that was both distinct from prior methods and an improvement over them.
Lastly, drawing from Diamond v. Diehr, a claim that includes a transformation—whether physical or electronic—of an article or data into a different state or thing is strong evidence of a patent-eligible application. This reflects the broader principle that claims grounded in real-world, practical implementations of technology, rather than abstract results or ideas, are more likely to meet the threshold for patent protection.
Use Appeals Sparingly
An Appeal Should be an absolute last resort. Most Section 101 appeals to date have not been successful. Attempt to resolve all Section 101 issues at the examiner level.
