In Books One and Two, the barrier at Walnut Canyon served as a physical test—cross it, and you enter the examination system. Fail, and you're rejected before you even begin.
The real USPTO has the same gate: 35 U.S.C. § 101.
Before the examiner considers whether your invention is novel (§ 102), non-obvious (§ 103), or properly disclosed (§ 112), they must answer a threshold question:
"Is this the type of thing that CAN be patented under U.S. law?"
This is the subject matter eligibility question. It's the gate you must pass through before examination even begins.
And just like the barrier at Walnut Canyon killed 23 applicants who didn't meet the requirements—§ 101 kills more patent applications than any other single rejection in certain Technology Centers (especially TC 2100 - software).
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 therefor, subject to the conditions and requirements of this title.
This statute establishes four statutory categories of patent-eligible subject matter:
Plus: Improvements to any of the above ("improvement thereof").
If your invention fits into one of these four categories, it passes the first test. But that's not enough—because the Supreme Court has carved out judicial exceptions to § 101.
Even if your invention fits one of the four statutory categories, it's still not patent-eligible if it's merely:
Why these exceptions? The Supreme Court has held that these are "the basic tools of scientific and technological work" (*Alice Corp. v. CLS Bank*, 573 U.S. 208). If you could patent E = mc², no one else could use that equation in their inventions—innovation would grind to a halt.
📖 Margin Story: Day 13, The Flames Intensify
Zara stared at her hands. Small flames licked between her fingers now—not painful, but present. The veil shimmered on the horizon, close enough to see details in the barrier's surface.
"Why does the gate exist?" she asked Severen, watching the flames dance. "Why can't everything be patented?"
He gestured to the flames in her palm. "Can you patent fire itself? The natural phenomenon of combustion? No. Fire belongs to everyone—it's a tool humanity discovered, not invented."
"But I could patent a specific way to control fire? A device that channels it? A composition that burns with particular properties?"
His sapphire eyes gleamed. "Exactly. You can't monopolize the building blocks—but you can patent specific applications of those blocks. That's the line § 101 draws."
The flames in her palm flared briefly, then settled. "The barrier at Walnut Canyon tested whether Mother was the right inventor. This gate—§ 101—tests whether the invention is even the right type of thing to patent."
"Different test. Same purpose. Protect the system from improper claims." He squeezed her shoulder gently. "One more day until the veil. We keep moving north."
When an invention potentially involves a judicial exception, the USPTO applies the Alice/Mayo two-step test to determine patent eligibility. See MPEP § 2106.
Step 1: Is the claim directed to a judicial exception?
Step 2: Does the claim recite additional elements that amount to "significantly more" than the judicial exception?
Key cases establishing this framework:
The examiner evaluates whether the claim, as a whole, is "directed to" one of the judicial exceptions. See MPEP § 2106.04(a).
How to tell if a claim is "directed to" an exception:
Abstract idea (software/business method):
"A method of intermediated settlement comprising: (1) creating a shadow record for each party, (2) obtaining transaction information, (3) adjusting the shadow records, and (4) issuing settlement instructions."
→ Alice held this was directed to abstract idea of intermediated settlement (escrow). Using generic computer implementation did not save it.
Law of nature (medical diagnostics):
"A method of optimizing drug dosage comprising: (1) administering drug to patient, (2) measuring metabolite levels in blood, (3) comparing levels to known correlation, and (4) adjusting dosage based on comparison."
→ Mayo held this was directed to natural correlation between metabolite levels and drug efficacy. Conventional "administering, measuring, comparing" steps were not enough.
If the claim IS directed to a judicial exception, the examiner must determine whether additional elements (beyond the exception itself) amount to "significantly more." See MPEP § 2106.04(d).
What counts as "significantly more":
What does NOT count as "significantly more":
Example 1: Improved Computer Functionality
"A self-referential database structure that eliminates the need for object-relational mapping, improving query speed by 50% compared to conventional databases."
→ Enfish v. Microsoft held this was not directed to abstract idea because it improved computer functionality itself. The invention was a better database, not an abstract idea applied to a generic database.
Example 2: Specific Technical Application
"A method of curing synthetic rubber comprising: heating rubber to 400°F in presence of sulfur catalyst under 50 psi pressure for 6 hours."
→ Even though chemical curing is a natural phenomenon, this claim recites specific temperature, pressure, time parameters that amount to a specific technical application. Patent-eligible.
Example 1: Generic Computer Use
"A computer-implemented method of intermediated settlement comprising: receiving transaction data, storing data in memory, processing data according to settlement algorithm, and transmitting settlement instructions."
→ Alice rejected this. Using generic computer components (memory, processor, transmission) to implement abstract idea is not significantly more.
Example 2: Routine Application of Law of Nature
"A method comprising: administering a drug, measuring metabolite levels using standard blood test, and determining if levels are outside normal range."
→ Mayo rejected this. The natural correlation (metabolite levels indicate drug efficacy) is applied using only routine, conventional techniques. Not significantly more.
📖 Margin Story: Zara Tests the Gate
"So if I claimed 'a method of controlling fire using willpower'—what happens?" Zara asked, watching flames spiral between her fingers.
Severen's expression sharpened. "Step 1: Is it directed to an exception? Yes—mental process, abstract idea of 'willing something to happen.' Step 2: Does 'using willpower' add significantly more? No—it's just applying the abstract idea without technical means."
"Rejected under § 101," she murmured. "But what if I claimed 'a method of directing combustion by modulating neural electromagnetic fields at 40Hz, causing chemical bonds in methane to destabilize at specific atomic positions'?"
He smiled. "Now you're teaching a specific technical process. Step 1: Directed to law of nature (combustion)? Yes. Step 2: Does specifying '40Hz neural fields targeting specific chemical bonds' add significantly more? Probably yes—that's a concrete, unconventional application."
She felt the first soul settle into place, flames steady now instead of flickering. "The difference between monopolizing fire itself versus monopolizing a specific way to control it."
"Exactly. That line—between building block and application—is what § 101 protects."
Let's break down each of the four categories from § 101:
Definition: "Process" means "process, art, or method" and includes a new use of a known process, machine, manufacture, composition of matter, or material. 35 U.S.C. § 100(b).
Examples:
Key issue: Process claims are most vulnerable to § 101 rejection if they recite abstract ideas or laws of nature without specific technical application.
Definition: A concrete, tangible device with a defined structure and interrelated parts working together to perform a function.
Examples:
Key issue: Must recite actual structure, not just functional result. Generic "computer system" with no specialized structure may not overcome § 101 if implementing abstract idea.
Definition: An article made by human hands or machines; a tangible object that is not a machine.
Examples:
Key issue: Must be "made by man"—naturally occurring things are not manufactures even if isolated/purified (Myriad Genetics).
Definition: Chemical compositions, mixtures, compounds, or new materials.
Examples:
Key issue: Natural products are not patent-eligible (Myriad), but synthetic versions with "markedly different characteristics" may be (Chakrabarty).
| Category | Definition | Example Claim | Key § 101 Risk |
|---|---|---|---|
| Process | Method, series of steps | "A method comprising steps A, B, C..." | Abstract idea if no technical application |
| Machine | Device with structure | "An apparatus comprising elements X, Y, Z..." | Generic structure may not save abstract function |
| Manufacture | Article made by humans | "A widget comprising features A, B..." | Natural products not eligible (Myriad) |
| Composition | Chemical compound/mixture | "A compound having formula C10H15N..." | Natural phenomenon if unmodified natural substance |
Beyond fitting into one of the four statutory categories and not being a judicial exception, the invention must also be "useful" under § 101. See MPEP § 2107.
The utility requirement has three components:
Requirement: The invention must have a particular, defined use—not just general applicability.
Example of lack of specific utility: "A chemical compound useful for treating disease." → Too vague. Which disease? What mechanism? How is it used?
Example of specific utility: "A chemical compound that inhibits Cox-2 enzyme activity, useful for treating inflammation." → Specific biological mechanism and medical use.
Requirement: The invention must provide a real-world benefit—not just a theoretical or trivial use.
Example of lack of substantial utility: "A chemical compound useful as an intermediate for further research." → Merely enabling further research is not substantial utility (Brenner v. Manson).
Example of substantial utility: "A pharmaceutical composition for oral administration that reduces blood pressure." → Real therapeutic benefit.
Requirement: The asserted utility must be believable to a person of ordinary skill in the art based on the disclosure.
Lack of credible utility: "A perpetual motion machine generating infinite energy." → Violates thermodynamics; not credible.
Credible utility: "A battery with energy density of 500 Wh/kg, demonstrated by working prototype described in Example 3." → Specific, measurable, supported by evidence.
Scenario 1: Pharmaceutical without demonstrated efficacy
Claim: "A compound of formula X useful for treating cancer."
Specification: No animal studies, no in vitro data, no mechanism explained—just speculation that it "might" treat cancer.
→ Rejection: Lack of credible utility under § 101. Mere speculation without supporting evidence is insufficient.
Scenario 2: Research tool with no end use
Claim: "An isolated DNA probe useful for identifying the presence of gene X."
Specification: Describes probe structure but doesn't explain what gene X does or why identifying it is useful.
→ Rejection: Lack of substantial utility. A tool that only identifies something without known significance is not sufficiently useful (In re Fisher).
Understanding the most common utility rejection scenarios helps you recognize them instantly on the exam and in practice. Here are the patterns examiners apply most frequently:
Claim: "A compound of formula C₁₅H₂₁NO₂ useful for treating cancer."
Specification disclosure: Shows chemical structure, synthesis method, but no animal studies, no in vitro data, no mechanism of action explained.
Examiner's rejection:
"The claimed compound lacks credible utility under 35 U.S.C. § 101. The specification provides no evidence that the compound actually treats cancer—no animal studies, no cell line data, no explanation of biological mechanism. Mere assertion of therapeutic use without supporting data is insufficient to establish credible utility. See In re Brana, 51 F.3d 1560 (Fed. Cir. 1995)."
Why this fails: Medical/pharmaceutical claims require evidence of efficacy. Courts and USPTO require more than speculation for drug claims because of public health implications.
How to overcome: Provide (1) experimental data showing anti-cancer activity in cell lines or animal models, OR (2) detailed mechanism explanation with scientific support showing compound targets known cancer pathway.
Claim: "An isolated DNA probe complementary to gene sequence X."
Specification disclosure: Describes probe structure and how to make it. Doesn't explain what gene X does or why identifying it is useful.
Examiner's rejection:
"The claimed probe lacks substantial utility under § 101. The specification discloses only that the probe can identify gene X, but provides no information about gene X's function or why identifying it has any practical value beyond facilitating further research. See In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005). Tools that merely enable further research without specific, substantial utility are not patent-eligible."
Why this fails: Brenner v. Manson established that enabling further research is not substantial utility. Must show real-world benefit beyond research use.
How to overcome: Explain what gene X does (e.g., "gene X encodes protein involved in Alzheimer's disease") and why detecting it matters (e.g., "probe enables early diagnosis of Alzheimer's risk").
Claim: "An energy generation device comprising: a rotor with magnets arranged in circular pattern, positioned to spin indefinitely without external energy input, and a generator extracting electrical power from the rotor."
Examiner's rejection:
"The claimed device is inoperable under § 101 as it violates the first and second laws of thermodynamics. The claim recites 'spin indefinitely without external energy input' while simultaneously 'extracting electrical power'—this describes perpetual motion, which is physically impossible. See [scientific authority on thermodynamics]. Applicant must provide evidence that device operates as claimed, which would require demonstrating a working prototype that violates established physical laws."
Why this fails: Well-established scientific principles (thermodynamics) create strong prima facie case. Burden shifts to applicant to provide extraordinary evidence.
How to overcome: Either (1) amend claims to remove impossible limitations (e.g., change "indefinitely" to "with reduced friction using superconducting bearings"), OR (2) provide working prototype data proving device actually works (extremely difficult).
Claim: "A pharmaceutical composition comprising compound X, useful for treating disease."
Examiner's rejection:
"The claim lacks specific utility. 'Treating disease' is vague—which disease? The specification demonstrates efficacy only for Type 2 diabetes (Example 4). Under broadest reasonable interpretation, 'disease' encompasses all diseases. Applicant has not demonstrated credible utility for treating cancer, heart disease, infectious diseases, etc. Claim scope exceeds demonstrated utility."
Why this fails: Claim is broader than specification support. BRI interprets "disease" to mean ALL diseases, but specification only proves utility for one specific condition.
How to overcome: Amend claim to match demonstrated utility: "A pharmaceutical composition comprising compound X, useful for treating Type 2 diabetes." Now claim scope matches specification disclosure.
Claim: "A computer-implemented method for managing patient medical records comprising: receiving patient data, storing data in database, retrieving data upon physician request, and displaying data on screen."
Examiner's rejection (often combined § 101 abstract idea + lack of utility):
"The claim is directed to abstract idea of data management and does not recite significantly more under Alice/Mayo Step 2B. The claimed method uses generic computer components (database, display) to perform conventional data storage/retrieval. No technical improvement disclosed. Additionally, specification provides no evidence that this method improves computer functionality, data security, retrieval speed, or any other technical parameter beyond conventional database systems."
Why this fails: Post-Alice, software claims need specific technical improvement. Generic automation of conventional process lacks both patent-eligible subject matter AND credible technical utility.
How to overcome: Amend to add technical details showing HOW the system improves on prior art: "...using blockchain-based distributed ledger ensuring tamper-proof medical records, where each data entry includes cryptographic hash of previous entry, preventing unauthorized modification while enabling HIPAA-compliant access control via smart contracts."
Claim: "A device for simulating sober human breath comprising: air pump, ethanol filter removing alcohol from expelled breath, and delivery tube positioned to provide filtered air to breathalyzer interlock device."
Examiner's rejection:
"The claimed device lacks utility under § 101 because its sole disclosed purpose is defeating court-ordered breathalyzer interlock systems. Specification states (pg. 3, lines 10-15) that device 'allows users to bypass ignition interlock systems even when intoxicated.' This violates state laws requiring interlock compliance. Device has no disclosed legal application. Inventions directed solely to illegal purposes lack patent-eligible utility."
Why this fails: No legal use disclosed. While dual-use technologies are patentable, devices with ONLY illegal applications may be rejected.
How to overcome: Either (1) identify legal uses in specification (e.g., "testing breathalyzer accuracy," "calibrating interlock sensors"), OR (2) argue that device has legitimate applications beyond disclosed illegal use (challenging if specification explicitly describes illegal purpose).
📖 Margin Story: Recognizing the Patterns
"These scenarios repeat," Severen said, spreading out case files before Zara. "Different inventions, same patterns. Pharmaceutical without data. Research tool without purpose. Device violating physics."
Zara studied the files. "If I can recognize the pattern instantly—if I see 'compound useful for treating disease' and immediately know it needs specific disease + credible mechanism—"
"You save time on the exam. You draft better applications. You respond faster to rejections." His sapphire eyes gleamed. "The examiners use templates. You should too. Learn the six common scenarios. The rest are variations."
She nodded slowly, flames flickering between her fingers as understanding settled. "Pattern recognition. Not memorization—recognition."
"Exactly. Now show me: which scenario is this?" He handed her a hypothetical claim.
Zara read it. Smiled. "Scenario 4—vague utility. Claim says 'treating conditions' but spec only shows one specific condition. BRI makes it too broad. Solution: amend to match demonstrated utility."
Severen's expression showed approval. "You're ready for the next lesson."
Beyond being specific, substantial, and credible, the invention must also have practical utility—meaning it must actually work (operability) and must not be directed solely to immoral or illegal purposes.
Rule: The invention must be operable—it must actually function as claimed. See MPEP § 2107.01(I).
Classic inoperable inventions:
Burden of proof: If the examiner establishes a prima facie case that the invention is inoperable (e.g., violates known scientific principles), the burden shifts to the applicant to provide evidence of operability.
Example 1: Inoperable - Perpetual Motion
Claim: "A device for generating unlimited energy comprising: (1) magnets arranged in circular pattern, (2) rotor positioned to spin indefinitely without energy input, (3) generator extracting power from rotor."
→ Rejection: Inoperable under § 101. Violates first and second laws of thermodynamics. No known mechanism for generating energy without input. Burden on applicant to demonstrate working prototype or credible theory.
Example 2: Operable - Novel Energy Storage
Claim: "A lithium-air battery comprising: novel cathode structure with 3D graphene foam, enabling energy density of 800 Wh/kg."
Specification: Includes experimental data showing charge/discharge cycles, energy density measurements, structural characterization of cathode.
→ Allowable: Claims novel battery design, not violation of physical laws. Specification provides evidence of operability through experimental results.
Historical rule: Inventions directed to immoral or illegal purposes lack utility under § 101.
Modern application (very rare):
Historical examples (no longer commonly rejected):
Dual-Use Technology (Generally Patentable):
"A method for anonymizing internet traffic using encrypted routing through distributed nodes."
→ Patent-eligible even though it could be used for illegal purposes (dark web). It has substantial legal uses (privacy protection, avoiding censorship, secure communications).
Purely Illegal Use (Potentially Rejectable):
"A device specifically designed to defeat vehicle breathalyzer interlocks by simulating sober breath."
→ Potentially lacks utility under § 101 if its sole purpose is defeating legally-mandated safety devices with no other legal application. (This is theoretical—modern examiners rarely invoke this ground.)
📖 Margin Story: Zara Tests Control
"Can I make fire that doesn't burn?" Zara asked, flames dancing between her fingers.
Severen raised an eyebrow. "Fire that doesn't burn isn't fire. That's inoperable—a contradiction in terms. You'd fail operability."
She frowned. "But I could make fire that burns selectively—only certain materials, only when I command it?"
"Now you're claiming a specific, operable application with defined parameters. That's patent-eligible." He gestured to the campfire. "Fire itself is a natural phenomenon. Fire that obeys specific control mechanisms you invented? That's yours to claim."
She closed her fist, extinguishing the flames with precision. "And if I used this fire for destruction? Would that make it immoral?"
"Dual-use technology," Severen said. "Fire can cook food or burn villages. The USPTO doesn't reject inventions just because they could be misused—only if they have no legal purpose whatsoever. Controlled fire has legitimate uses. You pass utility."
Understanding how examiners approach utility rejections is critical for responding effectively. The process follows a burden-shifting framework. See MPEP § 2107.02.
Rule: The examiner must establish a prima facie case that the claimed invention lacks utility before rejecting under § 101.
What constitutes a prima facie case:
Examiner CANNOT establish prima facie case by:
Valid Prima Facie Case:
Claim: "A cold fusion reactor generating net energy output using palladium electrodes in heavy water."
Examiner's rejection: "Applicant claims cold fusion, which has not been reproducibly demonstrated despite decades of attempts. See [scientific review articles explaining why cold fusion claims have failed replication]. Applicant has not provided experimental data demonstrating net energy output. Prima facie case of inoperability established."
→ Valid rejection. Examiner cited credible scientific authority establishing that cold fusion claims generally fail. Burden shifts to applicant.
Invalid Prima Facie Case:
Claim: "A battery with energy density of 500 Wh/kg using novel silicon-graphene composite anode."
Examiner's rejection: "This energy density seems unusually high. Applicant must prove the battery works as claimed."
→ Invalid rejection. Examiner provided no evidence that 500 Wh/kg violates physical laws or that prior art teaches it's impossible. Personal skepticism is insufficient. No prima facie case established.
Once the examiner establishes a prima facie case, the burden shifts to the applicant to provide evidence of utility. MPEP § 2107.02.
Types of evidence applicants can provide:
Most persuasive evidence. Actual test results demonstrating that the invention works as claimed.
Rejection: "Claimed battery with 500 Wh/kg energy density lacks credible utility—applicant has not demonstrated operability."
Response:
"Applicant respectfully traverses the rejection. The specification provides experimental data demonstrating operability:
Attached Declaration of Dr. [Inventor] provides additional post-filing test data confirming energy density of 502 Wh/kg in optimized prototype (Declaration, ¶¶ 8-15, Table 1). This data demonstrates specific, substantial, and credible utility."
Expert testimony under oath. Declarations from inventors, technical experts, or others with relevant knowledge.
What declarations should include:
Format requirements:
Explain why the invention is operable using established scientific principles, even without new experimental data.
Rejection: "Claimed method of treating cancer using compound X lacks credible utility—no evidence of efficacy."
Response with scientific argument:
"The specification explains that compound X inhibits the MEK1/2 pathway, which is known to be involved in cancer cell proliferation (spec. pg. 8, lines 10-18). This mechanism is well-established in the art:
Given the well-established role of MEK1/2 in cancer and the structural similarity to approved drugs, a PHOSITA would find credible utility for treating cancer. The specification's disclosure, combined with knowledge in the art, establishes utility."
During examination, the USPTO applies broadest reasonable interpretation (BRI) to claim terms. See MPEP § 2111. This affects utility analysis.
How BRI impacts utility rejections:
Original claim: "A pharmaceutical composition useful for treating disease."
Examiner's BRI: "Under BRI, 'treating disease' encompasses all diseases. Specification only demonstrates utility for diabetes. No credible utility for treating cancer, heart disease, etc. Rejection under § 101—lack of credible utility for claimed scope."
Applicant's response options:
When you receive a utility rejection under § 101, use this four-step framework to craft your response. Each strategy addresses different aspects of the rejection.
Strategy tip: You can use multiple approaches simultaneously. Often the strongest response combines clarifying utility (Step 1), providing evidence (Step 2), AND amending claims (Step 3).
Goal: Make explicit what the invention does and why it's useful. Often utility rejections stem from vague or unclear utility statements.
How to clarify:
Rejection: "The claimed pharmaceutical composition lacks specific utility. The claim recites 'useful for treating disease' without specifying which disease or how the compound treats it."
Response clarifying utility:
"Applicant respectfully traverses the rejection. The specification provides specific, substantial, and credible utility:
The utility is not vague—it is clearly and specifically disclosed as treatment of Type 2 diabetes via AMPK activation, supported by experimental data. One skilled in the art would understand the specific, substantial, credible utility from the specification disclosure."
Goal: Prove the invention actually works as claimed. This is critical when examiner establishes prima facie case of inoperability.
Three types of evidence (in order of persuasiveness):
What to provide:
Format: Tables with measurements and units, graphs showing trends, protocols explaining methodology
Rejection: "Claimed battery with 500 Wh/kg energy density lacks credible utility. Applicant has not demonstrated that such high energy density is achievable."
Response with experimental data:
"Applicant submits the attached Declaration under 37 C.F.R. § 1.132 from Dr. [Inventor], providing experimental evidence of operability:
This experimental data establishes credible utility. The invention has been reduced to practice and tested under conditions a PHOSITA would recognize as appropriate. The claimed energy density is not speculative—it has been measured and reproduced across multiple prototypes."
What declarations should contain:
Format requirements:
Declaration of Dr. Jane Smith in Support of Operability
¶ 1. Qualifications: I am Dr. Jane Smith, Ph.D. in Chemical Engineering from MIT. I have 20 years of experience in battery technology, including 15 years at [company] developing lithium-ion battery systems. I have published 45 peer-reviewed papers on energy storage and hold 12 patents in battery technology.
¶ 2. Familiarity with invention: I am a co-inventor on the present application and have personal knowledge of the experiments conducted and results obtained.
¶¶ 3-8. Technical explanation: The claimed silicon-graphene composite anode works by [detailed mechanism explanation]... This approach overcomes the volume expansion problem that plagued prior silicon anodes by [technical details]...
¶¶ 9-15. Experimental results: I personally conducted the following experiments... [detailed protocols, measurements, results with data tables]
¶ 16. Opinion: Based on my expertise and the experimental results, it is my opinion that the claimed battery has credible utility for high-energy-density applications and operates as described in the specification.
When to use: When you don't have new experimental data but can explain operability using established scientific principles.
What to include:
Goal: Narrow claim scope to match the utility actually demonstrated in the specification.
Common amendments:
Original claim:
"1. A pharmaceutical composition comprising compound X, useful for treating disease."
Rejection: Lack of specific utility—"disease" is vague and specification only demonstrates diabetes treatment.
Amended claim:
"1. A pharmaceutical composition comprising compound X, useful for treating Type 2 diabetes mellitus by activating the AMPK pathway to increase cellular glucose uptake."
Amendment remarks:
"Claim 1 has been amended to specify the disease treated (Type 2 diabetes mellitus) and the mechanism of action (AMPK pathway activation). This amendment is supported by specification disclosure at pages 10-11 and Example 4. The amended claim now clearly recites specific, substantial, and credible utility as required by § 101."
Goal: Challenge the examiner's prima facie case or show the rejection is based on incorrect understanding.
Arguments to make:
Rejection: "The claimed battery with 500 Wh/kg energy density lacks credible utility. This seems unreasonably high."
Argument challenging prima facie case:
"Applicant respectfully submits that the Examiner has not established a prima facie case of lack of utility. Under MPEP § 2107.02, the Examiner must provide 'sound reasoning' or 'credible evidence' that the claimed invention lacks utility. Personal skepticism that 500 Wh/kg 'seems unreasonably high' is insufficient.
The Examiner has not cited any scientific authority establishing that 500 Wh/kg violates physical laws or is theoretically impossible. To the contrary:
Without evidence that the claimed energy density is impossible or incredible, the Examiner has not met the burden of establishing a prima facie case. The rejection should be withdrawn."
📖 Margin Story: The Four-Part Response
Severen handed Zara a mock Office Action. "Utility rejection. You have one hour to draft a response. Use all four strategies."
Zara read it carefully. Pharmaceutical claim, "treating disease" too vague, examiner questioned efficacy.
She wrote: "Step 1—Clarify: Specification discloses Type 2 diabetes via AMPK activation. Step 2—Evidence: Example 4 shows 35% glucose reduction in animal model. Step 3—Amend: Change 'disease' to 'Type 2 diabetes mellitus.' Step 4—Argue: Examiner's BRI too broad; specification context limits 'disease' to metabolic disorders."
Severen reviewed it. Nodded. "Complete response. You used all four tools. That's how you overcome utility rejections—not by hoping one strategy works, but by building a fortress with multiple walls."
The flames in her palm burned steady. "And on the exam, I recognize the pattern, apply the framework, move to the next question."
"Exactly. The examiners follow templates. So do you. But yours are stronger because you understand the why behind each strategy."
📖 Margin Story: The Evening Before the Veil
That night, Zara could barely sleep. The flames no longer flickered—they burned steady, a constant warmth in her chest and hands. The veil was less than a mile away now, close enough to hear the hum of magic on the other side.
"Tomorrow, we reach it," Severen said quietly, sitting beside the fire. "Your first soul is awake. Two more wait on the other side."
"Will the veil test me? Like the barrier tested Mother?"
"The veil doesn't test worthiness. It tests readiness. Can you control what's awakening inside you? Or will it consume you?" His sapphire eyes reflected firelight. "Your mother had to prove she understood the system before entering. You have to prove you can handle what's inside you."
Zara closed her fist, extinguishing the flames. Then opened it—and they returned, controlled, precise. "I'm ready."
"Then tomorrow, we cross. And I tell you about the Hellfire—what it really is, why Renaldo chose your bloodline, and what happens when all three souls wake."
She smiled slightly. "And tomorrow, I stop asking theoretical questions about patent law. Tomorrow, I start applying it."
Severen's expression turned serious. "Tomorrow, the real examination begins."
When you receive a § 101 rejection (especially in TC 2100 software applications), here's your strategic approach:
When drafting software/business method claims:
In the story: Athelia's CIP claimed "bio-AI hybrid examination methods"—not "examination" generically, but a specific technical approach combining biological and AI elements. That's the level of detail that survives § 101.
| Case | Holding | Key Principle |
|---|---|---|
| Alice v. CLS Bank 573 U.S. 208 (2014) |
Intermediated settlement on generic computer = abstract | Generic computer implementation does not save abstract idea |
| Mayo v. Prometheus 566 U.S. 66 (2012) |
Applying natural correlation with routine steps = ineligible | Cannot patent law of nature by applying it conventionally |
| Diamond v. Chakrabarty 447 U.S. 303 (1980) |
Genetically modified bacteria = patentable manufacture | "Anything under the sun made by man" is patentable |
| Myriad Genetics 569 U.S. 576 (2013) |
Isolated DNA matching natural sequence = not patentable | Natural products not eligible even if isolated/purified |
| Enfish v. Microsoft 822 F.3d 1327 (Fed. Cir. 2016) |
Self-referential database improving computer function = eligible | Software improving computer technology itself passes § 101 |
| DDR Holdings v. Hotels.com 773 F.3d 1245 (Fed. Cir. 2014) |
Solving technical web navigation problem = eligible | Internet-specific technical solution not abstract |
| McRO v. Bandai Namco 837 F.3d 1299 (Fed. Cir. 2016) |
Automated lip-sync using specific rules = eligible | Specific technological process, not generic automation |
Exam tip: When you see a question about "computer-implemented method" or "business method" or "medical diagnostic," your brain should automatically go to MPEP § 2106. Phrase search "Alice Mayo" and you're there.
Section 101 is the gate. Before the USPTO examines novelty, obviousness, or disclosure, you must pass through:
In Books One and Two, the barrier at Walnut Canyon tested whether Athelia was the true inventor. Section 101 tests whether the invention is the right type of thing to patent.
Both gates protect the system. Both kill applications that don't meet the requirements.
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