The US Patent and Trademark Office (USPTO) has issued an advanced notice of change to the Manual of Patent Examining Procedure (MPEP) to reflect the Appeals Review Panel (ARP) decision in Ex parte Desjardins, Appeal 2024-000567 (Decided September 26, 2025).
In Desjardins, the ARP considered a claim directed to training machine learning models for artificial intelligence (AI) applications.
When considering whether the claim at issue recited a practical application at Step 2A, prong 2 of the framework established by the US Supreme Court in the case of Alice Corp. v. CLS Bank Int’l, the Desjardins decision stated that this “determination requires us to ‘evaluate the significance of the additional elements relative to the invention,’ while being mindful that ‘the ultimate question’ is ‘whether the exception is integrated into a practical application.’ MPEP § 2106.04(d)(II).”
The ARP noted that
…the Ex Parte Desjardins decision analyzed eligibility in terms of whether the claims were directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field under longstanding Federal Circuit precedent in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).
Ex Parte Desjardins explained that
Enfish ranks among the Federal Circuit’s leading cases on the eligibility of technological improvements. In particular, Enfish recognized that “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” 822 F.3d at 1339. Moreover, because “[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can,” the Federal Circuit held that the eligibility determinations should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.”
The ARP decision explained:
Paragraph 21 of the Specification, which the Appellant cites, identifies improvements in training the machine learning model itself. Of course, such an assertion in the Specification alone is insufficient to support a patent eligibility determination, absent a subsequent determination that the claim itself reflects the disclosed improvement. See MPEP § 2106.05(a) (citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016)). Here, however, we are persuaded that the claims reflect such an improvement. For example, one improvement identified in the Specification is to ‘effectively learn new tasks in succession whilst protecting knowledge about previous tasks.’…The Specification also recites that the claimed improvement allows artificial intelligence (AI) systems to ‘us[e] less of their storage capacity’ and enables ‘reduced system complexity.’…When evaluating the claim as a whole, we discern at least the following limitation of independent claim 1 that reflects the improvement: ‘adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task.’ We are persuaded that constitutes an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation.
Also, said the decision,
Categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology. Yet, under the panel’s reasoning, many AI innovations are potentially unpatentable-even if they are adequately described and nonobvious-because the panel essentially equated any machine learning with an unpatentable ‘algorithm’ and the remaining additional elements as ‘generic computer components,’ without adequate explanation…Examiners and panels should not evaluate claims at such a high level of generality.
Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here: https://aeonlaw.com/contact-us/.
