Overcoming a Section 101 Rejection: A Practitioner's Guide to Alice Step Two, Technical Improvement, and Claim Amendment
By Casey Scott McKay ·
A Section 101 rejection is not the end of an application, and it is also not something to argue with generically. This guide walks the response in twelve stages, from reading what the examiner actually said through the amendment, the argument, the evidence, the interview, and the appeal. It explains the difference between arguing that a claim does not recite an exception and arguing that it integrates one into a practical application, why novelty arguments fail at Section 101 and what to say instead, when a declaration on conventionality is worth the cost, and how to amend without surrendering scope you will need later. It covers the strategic decisions too: whether to fight, narrow, file a continuation, or abandon, and how each choice affects the family. Worked language runs throughout. The companion article supplies the doctrine and the companion checklist the box-by-box form.
IP and Technology > Patent Counseling Transactions | Guide | Published 29 November 2024 - Updated 29 November 2025 | Casey Scott McKay - marksy.us
Summary. A Section 101 rejection is not the end of an application, and it is also not something to argue with generically. This guide walks the response in twelve stages, from reading what the examiner actually said through the amendment, the argument, the evidence, the interview, and the appeal. It explains the difference between arguing that a claim does not recite an exception and arguing that it integrates one into a practical application, why novelty arguments fail at Section 101 and what to say instead, when a declaration on conventionality is worth the cost, and how to amend without surrendering scope you will need later. It covers the strategic decisions too: whether to fight, narrow, file a continuation, or abandon, and how each choice affects the family. Worked language runs throughout. The companion article supplies the doctrine and the companion checklist the box-by-box form.
Keywords: Section 101 rejection, Alice step two, practical application, technical improvement, claim amendment, examiner interview, Berkheimer evidence, conventionality declaration, prima facie case, subject matter eligibility guidance, appeal brief, PTAB appeal, prosecution strategy, response to office action, integration, significantly more, abstract idea, mental process, eligibility argument, patent prosecution
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