Legal Definitions - Section 101 rejection

A Section 101 rejection occurs when the U.S. Patent and Trademark Office (USPTO) determines that an invention, as described in a patent application, does not qualify as patent-eligible subject matter under Section 101 of the U.S. patent law (35 U.S.C. § 101). This section broadly defines what types of inventions can be patented, stating they must be a "process, machine, manufacture, or composition of matter."

However, through judicial interpretation, certain categories of subject matter are considered ineligible for patent protection, even if they are new and useful. These ineligible categories include:

• Laws of nature: Fundamental truths that exist independently of human action (e.g., gravity, the principles of electromagnetism).
• Natural phenomena: Naturally occurring events or substances (e.g., a newly discovered mineral, a naturally occurring gene sequence, a biological correlation).
• Abstract ideas: Concepts that are too fundamental or general to be patented, such as mathematical formulas, mental processes, or certain methods of organizing human activity.

A Section 101 rejection means the claimed invention is deemed to fall squarely within one of these ineligible categories without adding "significantly more" to transform the abstract idea, law of nature, or natural phenomenon into a practical, patent-eligible application.

Examples:

• Example 1: A new algorithm for optimizing supply chain logistics.

  Scenario: A company develops a sophisticated new algorithm that, when run on a computer, significantly improves the efficiency of complex supply chain operations by predicting demand and optimizing delivery routes. They file a patent application claiming this algorithm and its use in managing logistics.

  Explanation: This application would likely face a Section 101 rejection because the algorithm, even if novel and useful, could be considered an "abstract idea." Mathematical formulas, computational methods, and fundamental economic or organizational principles are generally not patentable on their own. To overcome such a rejection, the application would need to describe how the algorithm is integrated into a specific, non-generic machine or process that transforms the abstract idea into a practical, patent-eligible application, rather than merely implementing it on a general-purpose computer.

• Example 2: Discovering a natural plant extract that lowers cholesterol.

  Scenario: A research team identifies a specific compound naturally present in a common plant that, through extensive study, is proven to significantly lower cholesterol levels in humans. They file a patent application claiming this naturally occurring compound as a treatment for high cholesterol.

  Explanation: This claim would likely receive a Section 101 rejection because it describes a "natural phenomenon" – a naturally occurring compound and its inherent property. While the discovery of the compound and its benefit is valuable, merely isolating or identifying a natural product, without further modification or an inventive application that transforms it into something distinctly non-natural, is considered ineligible for patent protection. The claim would need to involve a non-naturally occurring form or a novel, inventive use beyond simply observing its natural properties.

• Example 3: A method for teaching a foreign language through a specific sequence of mental exercises.

  Scenario: An educator develops a unique and highly effective method for learning a foreign language, which consists entirely of a specific sequence of mental exercises, memorization techniques, and visualization practices. They seek a patent for this instructional method.

  Explanation: This application would likely be rejected under Section 101 because it describes an "abstract idea" or a "mental process." Methods that are purely mental steps, involve only human thought processes, or are fundamental educational concepts, without being tied to a specific machine or a transformation of matter, are generally not considered patent-eligible subject matter. The invention, in this case, is essentially a set of instructions for a human mind, which falls into the category of abstract ideas.