What do cricket legends like Imran Khan, Sir Don Bradman, Sachin Tendulkar, Sir Garfield Sobers, Sir Viv Richards, Shane Warne, Brian Lara, Jacques Kallis, Muttiah Muralitharan, and Wasim Akram have to do with surviving a 35 U.S.C. § 101 (“Section 101”) rejection? At first glance, absolutely nothing. But spend enough time at the crease of patent prosecution—facing the relentless swing of Alice Corp. v. CLS Bank and the seaming conditions of the Mayo Collaborative Services v. Prometheus Laboratories, Inc. two-step framework—and the parallels become impossible to ignore. Overcoming a Section 101 rejection is less like a legal exercise and more like a Cricket Test match: it demands preparation, composure, and a willingness to play the long game.
Mastery of the Pitch: Know the Alice/Mayo Rulebook Cold
Cricket is a bat-and-ball sport played between two teams. Each team takes turns “batting” and “fielding”, with the goal of scoring more runs than the other team. The batting team tries to hit the ball and run between wickets to score points, while the fielding team tries to prevent runs and get batters out. If the batter hits the ball to the edge of the field (the “boundary”) without the ball touching the ground, it’s called a “six” and scores six runs; if the ball touches the ground before reaching the boundary, it’s a “four” and scores four runs. Matches can last from a few hours to several days, depending on the format.
Cricket is governed by extensive rules that professionals internalize until compliance becomes instinctive—one misjudged run or illegal delivery can cost a match.
Section 101 prosecution is equally rule-intensive. The Alice/Mayo two-step framework—first asking whether the claim is directed to an abstract idea, law of nature, or natural phenomenon, and then asking whether it adds “something more”—governs every software, business method, and life sciences application. Practitioners must internalize the USPTO’s 2019 Revised Guidance (as discussed in our blog here), the 2024 AI Subject Matter Eligibility Update (available here), and the USPTO’s August 2025 Memorandum to Examiners (as discussed in our blog here), which clarified how the mental process grouping applies to software and AI claims and reminded examiners that a rejection should not be made simply because eligibility is uncertain. Understanding how examiners apply eligibility groupings before a single claim word is chosen is required.
In both domains, ignorance of the rules leads to costly losses. Just as a no-ball hands the batting side a free hit, a claim that recites nothing more than an abstract idea implemented on generic computer hardware is a gift to the examiner. Mastery of the eligibility rulebook—knowing which claim features constitute an “inventive concept” under Step 2B—is required. It is the first line of defense.
Reading the Pitch Before You Draft: Strategy Before Execution
A cricket captain never sends players onto the field without a plan. Batting order, bowling rotations, and field placements are shaped by pitch conditions, opponent strengths, and match format.
Surviving a Section 101 rejection starts with strategy well before filing. The practitioner must assess whether the invention will be characterized as an abstract idea, identify the specific technical problem being solved, and map out concrete, claim-level improvements to a technology or technical field. As discussed in our blog on the August 2025 USPTO Memorandum explains, the key distinction under Step 2B, Prong Two is whether the claim reflects a genuine technical improvement—or whether a computer is merely being used as a tool to perform an otherwise abstract idea. That distinction is everything.
Just as cricket teams tailor tactics to pitch and weather conditions, patent practitioners must tailor their claim architecture to the eligibility landscape. A claim set that integrates technical specificity at the independent level—while preserving dependent fallback positions—gives room to maneuver when the examiner’s first ball swings sharply.
The Opening Partnership: Draft a Specification That Does the Heavy Lifting
In cricket, opening batsmen set the tone. A solid partnership builds confidence and protects the team from early setbacks.
In Section 101 prosecution, the specification is your opening partnership. A richly drafted specification that clearly articulates the technical problem, the limitations of prior art approaches, and the specific technical mechanisms by which the invention solves that problem gives the examiner—and, if necessary, the PTAB or Federal Circuit—the evidentiary foundation to find eligibility. As discussed in our blog, the USPTO’s August 2025 Memorandum confirms that the specification need not explicitly set forth the improvement, so long as the invention is described such that the improvement would be apparent to one of ordinary skill in the art—but an explicit discussion of a technical problem, solution, and improvement is always preferable, as it avoids disputes over whether the specification supports the claims.
A weak specification—one that describes the invention in purely functional or result-oriented terms—leaves the practitioner exposed. A strong background and detailed description, grounded in specific technical mechanisms and measurable improvements, lays the foundation for every eligibility argument that follows.
Shot Selection: Claim Language Is Everything Under Alice
Cricket requires disciplined shot selection—choosing to defend or attack based on conditions. One reckless stroke can bring a batter’s innings to an abrupt end.
Under Section 101, claim language is your shot selection—and the wrong choice is fatal. Reciting a “processor” that performs a function “automatically” or “efficiently,” without specifying how, gives the examiner exactly what they need to characterize the claim as directed to an abstract idea on a generic computer. The USPTO’s August 2025 Memorandum reinforces this: claims must reflect a particular solution to a problem or a particular manner by which a desired outcome is achieved—not merely an instruction to “apply it.” Claims should recite specific hardware configurations, unconventional arrangements of components, or concrete algorithmic steps tied to a particular technical environment.
Restraint matters too. Overclaiming—reaching for a broad, purely functional claim when a more specific technical claim would survive—is the equivalent of going for a slog sweep against a quality spinner on a turning pitch. Sometimes the most powerful move is to narrow your claim to a specific, concrete technical improvement and let that eligibility-safe claim anchor the set.
Building a Defensive Wall: Dependent Claims and the “Something More” Requirement
While big shots win applause in cricket, it’s solid defense that builds a winning inning.
Broad independent claims that sweep across an abstract concept are vulnerable to Alice Step 2A rejections. Dependent claims are your defensive strokes. Each dependent claim that adds a specific, unconventional technical feature—a particular data structure, a novel arrangement of hardware components, a concrete algorithmic limitation—builds toward satisfying the “something more” requirement of Step 2B. Think of each dependent claim as a defensive block that keeps the innings alive while the examiner tests your boundaries.
Reading the Examiner’s Field: Anticipate the 101 Rejection Before It Arrives
Cricket teams constantly anticipate their opponents—bowlers analyze a batter’s weaknesses, batsmen read field placements, and captains plan for strategic shifts.
Experienced Section 101 practitioners study the examiner’s art unit and anticipate how the examiner is likely to characterize the abstract idea. Will the examiner group the claims under “certain methods of organizing human activity,” “mathematical concepts,” or “mental processes”? The August 2025 USPTO Memorandum— discussed in our blog—specifically highlighted the mental process grouping, reminding examiners not to expand it to encompass limitations that cannot practically be performed in the human mind, a point particularly relevant for AI and machine learning claims. Knowing the examiner’s likely field placement before filing lets you draft preemptive responses into the specification and claims.
Both cricket and Section 101 prosecution reward proactive, not reactive, thinking. The practitioner who has already identified the “something more” argument before the first Office Action arrives is already three steps ahead of the examiner’s delivery.
The All-Rounder Approach: Combining 101 Arguments for Maximum Impact
Cricket is the ultimate team sport—batsmen, bowlers, fielders, and support staff must work in harmony.
Overcoming a Section 101 rejection is rarely a one-argument game. The strongest responses layer multiple complementary arguments: a Step 2A, Prong One argument that the claim is not directed to an abstract idea at all; a Step 2A, Prong Two argument that the claim integrates the abstract idea into a practical application; and a Step 2B argument that the additional elements amount to significantly more than the abstract idea itself. Each argument plays a distinct role, and the combination is far more powerful than any single strand alone. Inventors, attorneys, and technical experts must collaborate closely to build this layered case.
Playing the Long Innings: Patience Through Multiple Office Actions
Test cricket is the oldest and most traditional form of international cricket, where two national teams compete over five days. Each team has two chances (called “innings”) to score as many runs as possible, and the match can ebb and flow with changing fortunes. Unlike shorter forms of cricket, Test matches are a true test of skill, strategy, and endurance—players must be patient, adaptable, and willing to play the long game. Results are often determined by subtle shifts in momentum, making it as much a mental contest as a physical one. Thus, success often comes to those who build their innings over hours, not minutes.
Section 101 prosecution often requires patience across multiple Office Actions. A first response that makes targeted claim amendments—adding specific technical limitations rather than abandoning claim scope wholesale—keeps options open for future arguments. Rushing to accept a narrowed claim after the first rejection, without fully developing the eligibility record, sacrifices strategic ground that cannot be recovered. Amend, argue, and preserve every viable eligibility argument for the innings ahead.
Adapting to Changing Conditions: When the 101 Landscape Shifts
Cricket is unpredictable—weather, pitch changes, and unexpected performances can force teams to adapt on the fly.
Section 101 law is equally unpredictable. A Federal Circuit decision can shift the eligibility landscape overnight. Practitioners must monitor key decisions—Enfish, McRO (discussed in our blog here), Berkheimer (discussed in our blog here), and more recently, Recentive Analytics (2025) (discussed in our blog here), which confirmed that applying generic machine learning to a new data environment does not constitute a technical improvement sufficient for eligibility—and be ready to adapt mid-prosecution when new case law creates openings or closes them. A well-drafted application is built with enough flexibility to adjust when conditions change.
Experience at the Crease: Building Section 101 Intuition
Section 101 expertise is built over years of practice. Early efforts may be technically competent but strategically naïve—relying on boilerplate eligibility arguments that experienced examiners have seen hundreds of times.
Seasoned practitioners develop an instinct for which claim features will attract a Section 101 rejection, which arguments resonate with particular art units, and when to appeal versus when to amend. They know that a Berkheimer-style factual argument—asserting that a claim element is not well-understood, routine, or conventional—can shift the burden back to the examiner. And when a specification falls short, they know to deploy the declaration practice under 37 C.F.R. § 1.132 (as discussed in our blog here), which the USPTO’s December 2025 memoranda (as discussed in our blog here) described as “an underutilized path to proffer evidence to establish subject matter eligibility.” Such declarations can establish the state of the art at filing, provide objective evidence of a technological improvement, or demonstrate that a skilled artisan would have recognized the invention as an advance. True expertise is forged not in theory but in the trenches, Office Action by Office Action.
The Prosecution Scorecard: Building a Strong 101 Record
Cricket is a game of numbers—runs, wickets, partnerships—each statistic tells the story of a match and informs future tactics.
Section 101 prosecution is equally driven by the record you build. Every argument made in response to an Office Action, every amendment distinguishing the claim from an abstract idea, and every declaration submitted under 37 C.F.R. § 1.132 to establish that a claim element is unconventional becomes part of the file history. That record can later be used to support or challenge the patent’s validity in litigation and when declarations address both eligibility and other statutory requirements, separate declarations for each are preferable to avoid muddying the record (as discussed in our blog here ). A well-constructed 101 file tells the story of a genuine technical innovation, not an abstract idea dressed up in technical clothing.
Playing the Long Game: Section 101 Strategy Beyond Grant
Both cricket and Section 101 patent prosecution are defined by long-term vision.
Section 101 practitioners must look beyond grant approval. A patent that survives examination only because the applicant narrowed every claim to a razor-thin technical limitation may be commercially worthless. The goal is to secure the broadest eligibility-safe claim set possible—one that will withstand a post-grant IPR challenge, survive a Section 101 motion to dismiss in district court, and still provide meaningful protection against competitors.
Choices made early—at the drafting stage, before a rejection ever arrives—shape outcomes for years to come. The practitioner who builds eligibility into the architecture of the application from day one, who drafts a specification that explicitly articulates a technical problem and solution, and who understands the full toolkit available—from claim-level amendments to § 1.132 declarations—is playing a very different game than the one scrambling to amend their way out of a final rejection.
Conclusion
Whether you are facing a first Office Action 101 rejection or defending your patent’s eligibility in federal court, the virtues that define great cricket—patience, precision, adaptability, and the wisdom to play for the long term—are precisely the virtues that define great Section 101 prosecution. Know the Alice/Mayo framework as well as a Test batter knows the Laws of Cricket. Draft your specification like an opening partnership built to last. Choose your claim language with the discipline of a batter who knows which balls to leave. Build your eligibility arguments in layers. And above all, never surrender your wicket cheaply to a rejection that a well-prepared practitioner could have anticipated before the first ball was bowled. The crease is yours. Play it straight.
