As a practitioner, 101 rejection is almost “annoying”. Case laws do not provide “black and white” bright-line rule. While it may or may not be a perfect tool, IP Author could provide one with good suggestions on overcoming such rejections.
Before going further, let’s first review Section 101. Section 101 states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” Thus, anything falls outside the scope of above sentence would be subject to 101 rejection – it is a subject matter eligibility issue.
101 is examined by these two steps:
Step One: Identifying Abstract Ideas and Natural Phenomena
Step 1: Check whether the claim is directed to a statutory category (process, machine, manufacture, composition of matter, or improvement thereof). If “no,” then the claim is directed to subject matter ineligible for patent protection. If “yes,” go to Step 2A.
Step Two: Assessing Inventive Concepts
Step 2A: Check whether the claim is directed to a statutory exception (laws of nature, natural phenomena (product of nature), or abstract idea). If “no,” then the claim is directed to subject matter eligible for patent protection. If “yes,” go to Step 2B.
Step 2B: Check whether the claim recites additional elements that amount to “significantly more” than the judicial exception. If “no,” then the claim is directed to subject matter ineligible for patent protection. If “yes,” then the claim is directed toward patent eligible subject matter.
While it seems simple to go through these two steps, in reality, case laws don’t give definite answer on the “yes” and “no”.
Let’s now turn to IP Author.
- Following instructions upload the office action and claim set file in XML format. IP Author will provide one with OA summary, see below screen capture. In this example (a real case), Claim 8,9,10,11,12,13,14,15,16 are rejected with 101 rejection.
- Proceed to do analysis and draft response. Under the suggested arguments, IP Author will provide you with some suggestions on what to argument, see screen capture below.
- In addition, it would provide you with suggested amendments – see screen capture below – suggested amendment on Claim 8, for example:
- Finally, IP Author would provide you with a complete draft template that you could utilize as a base and modify it where you see fitted.
Nevertheless, to avoid and/or overcome 101 rejections, here are a few points to keep in mind. For example, when drafting patent applications, try to incorporate as many hardware descriptions to support different embodiments as possible. The claims should incorporate “structure” as much as possible and make sure to have enough support with practical effects and proof of improvement by the invention.
