§ 101 — What Even Counts as an Invention

What even counts as an invention

It should be inherently obvious that I am not qualified to talk about any of this. If you think any of this is legal advice or grounded legal opinion, you are probably worse off than I am. This is just me opining on various topics from my experiences in the process. Consider all of this as just tall tales and fantasy from a crackpot inventor.

§ 101 — Worth a discussion, but not a full argument

Fine, the examiner didn't raise a § 101 — and honestly, I'm a little sad they didn't even take a look, because there was good reason to. Chalk it up as one more thing the examiner never reached. But I'm not going to hang my hat on this one, and I'm not pressing it as a ground in the PGR. It's a sensor, a widget, a device. It probably passes the § 101 smell test.

But § 101 has another caveat. Even a physical box can fail it if what you've really claimed is just a math relationship or a fact of nature with a sensor strapped on. You can't patent E = mc² by adding "…on a computer." The question isn't whether you built a thing — it's whether you added a real inventive application, or just pointed at a correlation and called it an invention. That two-part question has a name — the Alice/Mayo test: first, is the claim directed to an abstract idea or natural law (here, the bare correlation between a sinusoid and a direction change)? And if so, second, is there an inventive concept — something beyond generic, off-the-shelf parts doing their ordinary jobs — that turns it into a real application? Strip this claim to its core and you can see where a § 101 challenge would aim — step two: a magnetometer reading a magnetic field and a processor comparing values are the kind of generic, off-the-shelf parts that don't obviously add an inventive concept. I'm flagging that angle, not running it — it's exactly the sort of thin § 101 theory I'd rather not lean on, and I'm not pleading it — but that's the hook a § 101 argument would reach for, if one were on the table.

My issue with this whole disclosure is the leap from "hey the magnetic field is a sinusoid, and so is the motion of the pumping unit, they must be the same thing" to an actual patent. This is really a § 112 issue because they didn't enable that leap — they just wave their hands and say we can magically sense a change in direction from it. They didn't add anything inventive here. I make the full § 112 case in Dispatch No. 18. § 112 is so important, I'll probably do another post on it.

The way they frame it, it sure looks like a § 101 problem: just watch a sinusoid wiggle and read off the direction change. Framed that simply, you've claimed a bare correlation — a fact of nature with a sensor strapped on — and that's the kind of thing § 101 is supposed to keep out. But here's the catch: difficulty doesn't get you out of § 101. A claim doesn't become eligible just because the task is hard (or portrayed as overly simplistic, as is done here); it becomes eligible when it recites a real inventive application, not when it points at a correlation and calls it an invention. So you can't have it both ways. Either it really is that simple — in which case you're in eligibility territory, the bare-correlation question I'm flagging but not pressing — or it's genuinely hard (which it is), in which case they owed the reader an actual teaching of how, and the defect lands squarely at § 112, which is the ground I am pressing. They want the § 101 simplicity to make it sound real, and the § 112 sophistication to make it sound patentable.

On its face vs. read against the disclosure

Here's the nuance, and it's the whole reason I call this a discussion and not a full argument. Read the claim in isolation and it's fine. It's an apparatus — sensors, a processor, the usual furniture — and I'd let it walk through § 101 without much fuss. Here's the operative bit, from their amended Claim 13:

[Their amended claim]
…detecting the rotational values with the rotation sensor subsystem during a current stroke… comparing the rotational values with previously sensed rotational values… during a previous stroke… to determine if rotation… has occurred.

Strip the boilerplate and that's "measure a value, compare it to the last value, decide if it changed." On its own, fine — plenty of valid patents do exactly that, because the how is where the invention lives.

But now read it against their disclosure. The disclosure never teaches that how (that's the § 112 case in Dispatch No. 18). Strip the enabling teaching away and what's left isn't an inventive application of the comparison — it's the bare comparison itself, the naked correlation with a sensor strapped on. That's the version § 101 is supposed to keep out. The claim didn't get more abstract; the disclosure failed to give it the substance that would have kept it concrete. That's the tension: the same hollowness that makes this a § 112 problem is what drags the claim back toward the § 101 line. Two symptoms, one disease — a claim reciting a result the specification never earns. A fair caveat, though: doctrinally § 101 and § 112 are separate inquiries — eligibility is judged on the claim itself, and no court is going to formally fold an enablement failure into the § 101 analysis. So treat this as a thematic link — two symptoms pointing at one underlying emptiness — rather than a clean stand-alone § 101 argument. Which is exactly why I keep saying the real fight is § 112.

A diligent examiner would have at least run it through the § 101 abstract-idea test before waving it past — maybe the examiner did run it and it just never made it to the OA, but hey, what do I know.

The point in all of this is that the problem as they frame it is way more complicated than they let on. I'll come back to this in another § 112 post.

In terms of the PGR, it's not something to devote much word count to. It should be discussed, but the other sections are much stronger.

Related dispatches

• Dispatch No. 13 — You Still Don't Believe Me About the Direction Change Thing? — the sinusoid / direction-change leap this section leans on.
• Dispatch No. 14 — My Apology to Good Examiners — the examiner who never ran this test.
• Dispatch No. 18 — Indefinite and Unenabled — the full § 112 case I keep deferring to here.
• Dispatch No. 20 — New material, not in the disclosure — the previous dispatch.
• Dispatch No. 22 — § 102 — Nothing New Here — the next dispatch.
• Dispatch No. 23 — § 103 — Obvious to Anyone in the Field — where the "alternative embodiment" combination becomes an even easier obviousness case.
• Dispatch No. 24 — § 112 — They Never Said How — the § 112 ground where this "looks like § 101" hollowness really lands.
• Dispatch No. 25 — TL;DR; §§ 101, 102, 103, and 112 — the one-page recap tying it all together.