Patent Office Broadens Eligibility for AI Inventions

Recent actions by the US Patent and Trademark Office (USPTO) and remarks by USPTO Director John Squires suggest that the USPTO will be welcoming toward inventions involving artificial intelligence (AI).

The USPTO Appeals Review Panel (ARP) decision in Ex parte Desjardins, Appeal 2024-000567 (Decided September 26, 2025), clarifies the patent eligibility of AI inventions.

As the USPTO explains,

In this decision, an Appeals Review Panel (ARP) reversed the Board’s new ground of rejection under § 101, determining that the claims at issue reflect improvements in artificial intelligence (AI) technology. The ARP decision explains that the claims are patent-eligible, pointing to the Federal Circuit’s Enfish decision, which observes that many advancements in computer technology, “by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). The ARP decision further explains that the claims at issue are rejected under § 103, demonstrating that §§ 102, 103, and 112 are the traditional and appropriate tools for limiting patent protection to its proper scope.

In Desjardins, Patent Application No. 16/319,040 relates to training machine learning models. The Patent Trial and Appeal Board (PTAB or Board) rejected specific claims of the application.

The ARP noted that

35 U.S.C. § 101 provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor." Section 101, however, "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).

The Manual of Patent Examining Procedure (MPEP) describes the process the USPTO follows in evaluating whether a claim is drawn to patent-eligible subject matter under § 101.

As the ARP explained,

the process entails, at Step 1, determining whether the claimed subject matter falls within one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). See MPEP § 2106.03. Consistent with Alice's two-part framework, Step 2 of the process is a two-part test to identify whether claims are directed to a judicial exception, i.e., an abstract idea, law of nature, or natural phenomenon (Step 2A; see MPEP § 2106.04), and then to evaluate if additional elements of the claim provide an inventive concept; that is, whether they provide "significantly more" than the recited judicial exception (Step 2B; see MPEP § 2106.05).

Also,

Step 2A is a two-pronged inquiry. "Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?" § 2106.04(II)(A)(l). "Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?" MPEP § 2106.04(II)(A)(2). Only after a determination is made that the claim recites a judicial exception under the Prong One inquiry do we proceed to the Prong Two inquiry, and then to Step 2B.

If, at Prong Two, the claim as a whole is not directed to a judicial exception, the eligibility analysis is concluded.

In the Desjardins case, as the ARP explained,

Independent claim 1 recites "computing ..., an approximation of a posterior distribution over possible values of the plurality of parameters." Independent claims 18 and 19 recite similar limitations. Appeal Br. 20-21 (Claims App.). In entering the new ground of rejection, the Board determined that at least this limitation recites a mathematical calculation, a mathematical concept, and thus an abstract idea.

The Board determined that "we discern no additional element (or combination of elements) recited in Appellant's claims 1, 18, and 19 that may have integrated the judicial exception into a practical application."

The Appellant disagreed, asserting that "the claims recite additional elements that reflect '[a]n improvement in the functioning of a computer, or an improvement to other technology or technical field'…”

Specifically, the Appellant identified certain limitations of independent claim 1 and asserted that "the claimed subject matter provides technical improvements over conventional systems by addressing challenges in continual learning and model efficiency by reducing storage requirements and preserving task performance across sequential training."

The ARP agreed.

In remarks delivered at the American Intellectual Property Law Association annual meeting on October 31, Director Squires promised that additional guidance was forthcoming on the issue of patent eligibility for AI-related inventions.

Said Squires,

…the Enfish decision, which holds as patent eligible improvements to computer data structures. DL, if nothing else, is the ultimate data structure—and a technology that’s been around for more than 15 years. And re-engineering is therefore a new use under 100(b). And AI, claimed and supported correctly, is merely the other side of the Enfish coin.

In Ex parte Desjardins, the claim related to improvements to machine learning models to “effectively learn new tasks in succession whilst protecting knowledge about previous tasks.” But this had been abstracted out of existence sua sponte by the Desjardins Board—trying to do the right thing, mind you. And I am by no means picking on them whatsoever. The guidance simply hasn’t been there. But believe me, it will be shortly. Eligibility simply can’t be relegated to the eyes of the beholder. And it will not be on my watch.

If there is one thing I am going to accomplish in my tenure, it’s this—making sure the door to the patent office is wide open to transformative technologies. Bottom line, for eligibility, you have to know what to be looking for. So, what is it after all this that we are looking for?

That’s the third pillar: something more. The something more that Alice and Mayo tell us to look for. The artifacts of re-engineering that revolutionary technologies provide. The improvements, the application of technology. When the system changes its architecture, how information flows, not just what it does. That’s why AI and distributed-ledger innovations aren’t fringe. They are the center of what eligibility was written for. Eligibility follows architecture. When technology rewires the foundation, when everything around it is re-engineered, that’s when invention begins.