Squires’ Application of Section 101 in Ex parte Desjardins Bodes Well for AI Patents

In Ex parte Desjardins, Appeal 2024-000567 (Decided September 26, 2025), the U.S. Patent and Trademark Office’s (USPTO’s) Appeals Review Panel (ARP) – which in this instance included Director John A. Squires, Acting Commissioner Valencia Martin Wallace, and Vice Chief Judge Michael W. Kim – considered a claim directed to training machine learning models. This decision has already been celebrated by many in the IP community for the positive impact it could have for patent applicants and patentees, and indeed this was a great way for Director Squires to make his presence known straight out of the gate.

While the decision unfortunately will not have much, if any, impact on Article III litigation, it can and should be used in the right circumstances before the USPTO – whether in ex parte proceedings or in inter partes reviews (IPRs).

What Desjardins Said

One of the first things the decision discussed was the technological improvements to training advanced by the Desjardins application. When considering whether the claim at issue recited a practical application at Step 2A, prong 2 of the Alice framework, the Desjardins decision noted 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 Desjardins decision went on to explain:

“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.”

And, importantly, the decision added:

“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.”

The Desjardins decision further referred to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337–38 (Fed. Cir. 2016) as “well-settled precedent”, remarking that PTAB “panels should treat such precedent with more care, especially when acting sua sponte.”

The ‘Other’ Statutory Provisions Work

In addition, more than hinting that patent-eligibility should remain a low bar and indeed a mere threshold test, the Desjardins decision said that, “[a]t the same time, the claims at issue stand rejected under § 103. This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination.”

So, there it is. Director Squires taking real action to support and foster AI inventions at the USPTO. Now, let’s hope Congress can finally pass the Patent Eligibility Restoration Act (PERA).

Image Source: Deposit Photos
Author: Devon
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