What is a Section 101 Rejection?
The Alice/Mayo two-step test, the abstract idea and natural law exceptions, how examiners apply the USPTO guidance, and the arguments and amendments that overcome the rejection.
Definition
A Section 101 rejection is an examiner's determination that a claim is directed to subject matter that is not eligible for patenting under 35 U.S.C. § 101, most often because it is directed to an abstract idea, a law of nature, or a natural phenomenon without adding significantly more. It is the dominant rejection in software, business method, and diagnostic applications.
Key Facts
- Statute: 35 U.S.C. § 101 permits patents on any new and useful process, machine, manufacture, or composition of matter
- Judicial exceptions: Abstract ideas, laws of nature, and natural phenomena, as set out in Mayo v. Prometheus (2012) and Alice v. CLS Bank (2014)
- The test: Step one asks whether the claim is directed to an exception; step two asks whether the claim adds an inventive concept that amounts to significantly more
- USPTO framework: MPEP § 2106 splits step one into Prong One (does the claim recite an exception) and Prong Two (is it integrated into a practical application)
- Where it bites: Software, fintech, e-commerce, and diagnostic method art units; rarely in mechanical or chemical applications
- Also a litigation defense: § 101 invalidity can be raised in a motion to dismiss before discovery
The Two-Step Test in Practice
Step 2A, Prong One: Does the claim recite a mathematical concept, a method of organizing human activity (such as a commercial transaction or a mental process), or a natural law? If not, the claim is eligible and the analysis ends.
Step 2A, Prong Two: If it does, is the exception integrated into a practical application? Improvements to computer functionality, a particular machine, a transformation of matter, or a specific treatment step count. Merely implementing the idea on a generic computer, or adding insignificant data gathering, does not.
Step 2B: If not integrated, do the additional elements, individually or in combination, add significantly more than what is well-understood, routine, and conventional? Under Berkheimer v. HP (2018), an examiner asserting that an element is conventional must support it with evidence.
Overcoming the Rejection
- Argue Prong One: Show the claim does not recite an abstract idea at all, for example because it is a specific technical process rather than a mental or commercial one
- Argue Prong Two: Point to the technological improvement in the specification and tie the claim elements to it; Enfish, McRO, and DDR Holdings are the usual authorities
- Amend: Add the specific technical mechanism that achieves the improvement, drawn from the specification, so the claim reads on the solution rather than the result
- Demand evidence: Under Berkheimer, require the examiner to support any finding that an element is conventional
- Interview: Eligibility rejections are more often resolved by conversation than by written argument
Drafting to Avoid It
The specification must describe a technical problem and how the claimed steps solve it, in terms of what the computer does differently, not what the business achieves. Claims that recite only the desired result invite the rejection; claims that recite the mechanism survive. ArcPrime's patent drafting tooling flags result-oriented claim language at the drafting stage, and its office action response tooling builds the Prong Two argument from the specification's technical description.
Frequently Asked Questions
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What is the Alice test?
The two-step framework from Alice v. CLS Bank (2014). Step one asks whether the claim is directed to a judicial exception such as an abstract idea. If so, step two asks whether the claim's elements, individually or as an ordered combination, add an inventive concept that transforms it into significantly more than the exception itself.
Is software patentable in the US?
Yes, when the claims are directed to a specific technical improvement in how a computer or network operates, rather than to an abstract idea implemented on a generic computer. Claims to improved data structures, memory management, network protocols, and user interface mechanics have been upheld; claims to business methods carried out with software usually have not.
How do you overcome a Section 101 rejection?
Show that the claim does not recite an abstract idea, or that it integrates the idea into a practical application such as an improvement to computer functionality. Amend to recite the specific technical mechanism from the specification, require the examiner to provide evidence for any assertion that elements are conventional, and use an interview to find agreeable language.
What is the difference between Step 2A and Step 2B?
Step 2A determines whether the claim is directed to a judicial exception: Prong One asks whether it recites one, Prong Two whether the exception is integrated into a practical application. Step 2B, reached only if the claim is directed to an exception, asks whether additional elements add significantly more than well-understood, routine, conventional activity.
Can a granted patent be invalidated under Section 101?
Yes. Eligibility is a question of law that defendants frequently raise in a motion to dismiss at the start of litigation, before discovery. Since Alice, courts have invalidated many software and business method patents at that stage.
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