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As we can see, the revised USC 101 flow chart, for evaluating the patentability on subject matter [1], reproduced below, there are three ways to overcome the rejection*.

Streamline analysis, also called pathway A, is a self - evident analysis, if you want to take this path, which need to eliminate all the doubts from examiner regarding subject matter eligibility. Such as forging a device or control system that use even a mathematical relation, since they are so tangible and obvious that belongs to the four statutory categories. Streamline analysis no wonder is the fastest and many of us may welling to take, but most of the time, it is not for us to choose. Btw, in order to take pathway A, your invention (or the way claims are drafted) is sustainable to take the pathway B or C, otherwise it wouldn't pass the pathway A.

In accordance with the flow chart above, if we are not going to the revised step 2A box, we must not trigger the judicial exception. Which are

A. Law of nature.

B. Natural phenomena.

C. Abstract idea. 1) Mathematical equation, or mathematical concept. 2) Certain measure of organization, human activity. 3) Mental process - concepts performed in the human mind (observation, evaluation, judgment, opinion etc.,).

The reason why these judicial exceptions are not patentable, as they are basic tools of scientific and technology work. The USPTO acts as a public defender will not allow patents’ claims that designed to monopolize the judicial exceptions.

One of the ways to overcome or avoid USC 101, and take the streamline pathway, is get your claimed product as tangible as possible, like the examples above. Although, it is not always can be done. For software, or more technology related method claims, improvement in the functioning of a computer or another technology or technological field my render a claim patent eligible. Even if it recites an abstract idea, law of nature or natural phenomenon. There is big difference between a improvement of functioning of a computer or the technology, than using them. For example, a method for trading derivatives, or a new method for hedging, or correcting user data for insurance company, all these are using computer technology, not improving them, even they use specialize hardware, they are not improving any functionality of computer or make the technology any better. On another hand, if an algorithm that implemented by a filter which detects internet attacks, this kind of invention make the internet better (faster), safer, more reliable, thus improves internet technology.

* To said overcome the rejection may raise concerns, but rather avoid rejections may be more appropriate.

[1] MPEP § 2106, subsection III

Note – this is not legal advice. It's intended to be a general introduction to the topic of patent, copyright, and trademark. If you have specific questions, we highly recommending consulting a lawyer. © 2020 Fan Ng