While much has been said recently regarding Section 101 following Supreme Court cases like Alice, there is another type of Section 101 rejection sometimes used by Examiner when the invention is said to lack utility.
A recent PTAB decision in application 10/141,033 discusses the issue with regard to an invention for predicting the location of petroleum deposits based on sever weather. To properly reject an application under this theory, the examiner must do more than merely question the operability of the invention. Rather, if the specification suggests a scientifically unbelievable theory, the examiner must set forth factual assertions which would lead one skilled in the art to question the objective truth of the statement of operability. The burden then shifts to the Applicant to come forward with evidence of utility. There must be an adequate nexus between the evidence and the properties of the now claimed subject matter as disclosed in the application as filed. That is, the applicant has the burden to establish a probative relation between the submitted evidence and the originally disclosed properties of the claimed invention. MPEP 2107.
In the '033 application, the Applicant sufficiently met this burden by including a significant amount of scientific and other declaration evidence showing the required nexus. The Applicant had an uphill battle in this case as the Board had previously sustained this rejection, but with new rationale. The Applicant elected to return to prosecution before the examiner to enter additional evidence, before returning on appeal to the Board. While this case is an interesting example of how to present the right evidence with a nexus to the claimed invention, the long drawn-out history shows that it can take herculean efforts to convince the Office of an invention's utility once it establishes the initial doubts. It is disappointing that in this case, the Applicant was forced to file three separate petitions (all granted) to address Examiner mistakes/misconduct (one of which resulted in improper abandonment), as well as two appeals to the Board. The attorney handling this case had to use every tool at his disposal to navigate through the complicated bureaucracy of the USPTO.