It is noted that the Supreme Court has determined on more than one occasion that prior to examining a patent application for novelty and obviousness, claims in the application should be examined as to whether they claim material patentable under 35 USC 101. See:

Flook, 437 US at 593, “The obligation to determine what type of discovery is sought to be patented … must precede the determination of whether that discovery is in fact new or obvious”; and

Bilski, 130 S. Ct at 3225 noting that determining if claims are directed to statutory subject matter is a “threshold test”.

And in 2009 the CAFC, In re Comiskey 554 F.3d 967, 973 stated “Only if the requirements of §101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under §102 and … non-obviousness under §103”.

FROM OUR PERSPECTIVE, if arguments leveled against claims for not complying with §101 are based on obviousness considerations, such as the Supreme Court arguments in Alice Corporation Pty. Ltd. V. Cls Bank International, then the claims should be considered to pass the §101 test.

Just a reminder, in Alice the Supreme Court contended that Alice’s claims were based on ‘a fundamental economic practice long prevalent in our system of commerce,’ and that applying a computer to a task which is understood by a PHOSITA as amenable to computer execution  is  well known – which makes for a reasonable obviousness rejection – but not a §101 rejection.

Just a note: The USPTO in its June 25 Preliminary Examination Instructions in response to ALICE reflects confusion re §101 and hedges it bets, instructing Examiners

“After conducting the two-part analysis, proceed with examination of the claim, regardless of whether a rejection under § 101 has been made, to determine patentability in accordance with the other requirements of 35 U.S.C. § 101 (utility and double patenting), non-statutory double patenting, and §§ 112, 102, and 103.”