The Patent Office Rejected Your Invention For Being An Abstract Idea. Fight Back!

Patent eligibility law under § 101 remains foggy on its clearest day. But a rejection of your patent claims under § 101 isn’t necessarily the end of the road. With the right legal and technical strategy, you can improve your chances of overcoming it.

Understand the Patent Eligibility Legal Framework

The USPTO follows a two-part test for eligibility:

Step 1: Is the claim directed to a statutory category (e.g., a process or machine)? → Most claims pass.

Step 2A (Prong One): Is the claim directed to a judicial exception (like an abstract idea or natural law)?

Step 2A (Prong Two): Does the claim integrate the exception into a practical application?

Step 2B: If not, does the claim include an “inventive concept” that adds something significantly more?

Identify Your Strengths & Make Amendments & Arguments Accordingly

The toughest road for 101 arguments is where your invention got classified in TC 3600, (business methods), TC 1600 (biotech/diagnostics) and TC 2100 (software/networking). Generally, the odds of success in dealing with 101 rejections for claims so classified is less than 50/50.

You can't go back in time and title your application and style your claims to engineer a different classification. But you can take these steps to help yourself.

Amend your claims:  Minimize / eliminate functional language and include specific technical structures from your spec in your claim language.

Emphasize Technical Solutions in your arguments: Clearly articulate how the invention provides a technical solution to a technical problem.

Leverage USPTO Guidance: Align arguments with the USPTO's subject matter eligibility guidelines, such as the 2019 Revised Patent Subject Matter Eligibility Guidance.

Interview the Examiner: Discussing the application directly with the examiner can provide insights and opportunities to address concerns effectively.

Integrate winning case law in your arguments:

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)

• Use when: Your claims are directed to improvements in computer functionality, such as improved data structures or performance.

• Why it works: Court held that not all software is abstract; improvements to the computer itself can be patent-eligible.

  
  

McRO v. Bandai Namco Games America, 837 F.3d 1299 (Fed. Cir. 2016)

• Use when: You have rules-based software or claim automation of a previously manual process.

• Why it works: Claims focused on specific rules for animating lip synchronization were not abstract.

  
  

DDR Holdings v. Hotels,com, 773 F.3d 1245 (Fed. Cir. 2014)

• Use when: Your claims address a problem unique to the internet or networked environment.

• Why it works: The court found patent eligibility because the solution was rooted in computer technology and not merely a business method.

  
  

Berkheimer v. HP, 881 F.3d 1360 (Fed. Cir. 2018)

• Use when: You want to argue that Step 2B (inventive concept) presents a factual issue.

• Why it works: Court ruled that whether something is "well-understood, routine, and conventional" is a factual question, making summary judgment or rejection at early stages improper in many cases.

  
  

Ancora Technologies v. HTC America, 908 F.3d 1343 (Fed. Cir. 2018)

• Use when: You have claims involving security or system improvements.

• Why it works: Court held that a method of improving computer security (license verification using BIOS) was not abstract.

Final Thoughts

Although § 101 rejections remain a hurdle -- especially in software and diagnostic arts -- they’re not a dead end. The Patent Office guidance and the Federal Circuit have provided guardrails that you can use to push back. With a well-crafted response and a little luck, it is possible to beat the odds.