You need to get 101 down pat. There should be no 101 issues in your claims. If you try to argue a 101 rejection using the old tests, you will immediately be shut down and given a final rejection.
Read the Interim Guideline I posted. While not every examiner understands them, that's the standards. If you appeal an improper 101 rejection using the Interim Guideline, the Boards will most likely rule for you and overturn the bogus rejection.
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Originally Posted by 35 U.S.C. 101 Inventions patentable.
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.
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Traditionally, 101 has 2 distinct requirements, like I said above. 101 also deals with double patenting, but I won't get into that.
First, you have to determine statutoy category of invention. If it's one a machine, manufacture, and composition of matter, you're good to go. The guidelines describe these categories in detail.
If it's a process/method, you need to see it's a statutory process or if the claim includes a judicial exception.
Judicial exception = law of nature, abstract idea, natural phenomenon.
The analysis goes like this. If your claimed subject matter is not a judicial exception, then your claim is a statutory category of invention. It doesn't matter which category your claim is, as long as it doesn't contain a judicial exception then you're good to go.
So if you have no law of nature, abstract idea, or natural phenomenon in your claim, you're good to go. The actual category doesn't have to be established, as long as it's not one of those 3 listed.
Just beware that you can't write "hybrid" claims. Hybrid claims recite structures embedded in a method claim. These are nonstatutory. If you want method steps and structures, you have to recite an apparatus claim with functional limitations (capable of performing), or a product-by-process claim (which are just product claims so that doesn't help you).
Review the State Street Bank decision. It says you can claim a judicial exception provided your claim has utility. Keep in mind that a statutory category of invention automatically has utility because it was enacted by law. You only have to discuss utility for a judicial exception.
The test for utility goes like this.
First, does your judicially exempted subject matter produce a physical transformation? The guidelines define a physical transformation in the appendix. Stuff like per se data transformation and processes with no outputs do not produce a physical transformation.
If you have no judicial exemption, you have to look to see if your subject matter has concrete, useful, tangible results.
Concrete = repeatable and predictable
Useful = specific, substantial, credible
Tangible = real world, non-abstract
You must have:
a) physical transformation concrete, or
b) results that are:
1)useful,
2) concrete, and
3) tangible
So you must have at least one of a or b. In order to have b, you must have all of 1-3.
Then there is one last test. If your claim preempts all substantial applications of an abstract idea, it wil be rejected under the guidelines.
The preemption is rare and people still don't quite understand.
This stuff will almost never come up if you work in the mechanical or chemical art. Clearly those things are statutory. It gets blurry when you start working with computer-related inventions and business methods.
Even if you do all that, you're still not done yet. Look in the appendix. THere are several things you need to understand.
Never ever argue using an obselete tests. Don't even make it part of the official record.
Read the descriptive vs. non-descriptive functional materials section. You need to get that down cold. Descriptive func mat + computer readable medium = statutory. Non-desc func mat per se, or couple w/ computer readable medium is still nonstatutory either way.
Also, you can't claim signals (software, electronic, RF, etc) because they are nonstatutory. You can claim the method of using signals to communicate, but that's as far as you should get with that.
It's confusing as hell, and I highly doubt your professors or even seasoned attorneys understand what the hell is going on.