[Patentpractice] a decision that might help with 101 problems

Carl Oppedahl carl at oppedahl.com
Fri Sep 26 23:44:26 UTC 2025 

Today (September 26, 2025) the USPTO published a decision called /Ex 
parte Desjardins/, a copy of which is attached to this email.

In this case, some patent applicant in the world of AI appealed to the 
PTAB about a 103 rejection.  The case reached a three-judge panel of the 
PTAB.  The panel decided that in addition to ruling on the 103 
rejection, it would /sua sponte/ toss in a new ground of rejection under 
Section 101.  A request for rehearing fell on deaf ears with this 
panel.  The applicant didn't like that much and appealed to the Appeals 
Review Panel.  This panel is Director Squires (who took office a couple 
of days ago) and Acting Commissioner Wallace and CAPJ Kim.

The ARP scolded the three-judge panel and reversed.  Here is a paragraph 
from page 9 of the decision:

    Under a charitable view, the overbroad reasoning of the original
    panel below is perhaps understandable given the confusing nature of
    existing § 101 jurisprudence, but troubling, because this case
    highlights what is at stake. 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.

  It has gotten to the point where every one of my pending cases that 
has software or AI or a neural network or a large language model in it 
gets automatically rejected under Section 101.  And yes, in each of 
those cases, the Examiner routinely ignores the paragraphs of 
experimental results showing the improvements that the invention 
provides.  I think it's likely that going forward, when I respond to 
such an Office Action, I will be quoting this paragraph in the response.

I think it is extremely sad that the decision specifically cites 
"America's leadership" as the thing that needs to be protected.  I worry 
that the decision will signal to the Examiner that the citizenship or 
domicile of the applicant is somehow relevant in deciding whether the 
101 rejection should be imposed.



-------- Forwarded Message --------
Subject: 	Appeals Review Panel issues a new decision
Date: 	Fri, 26 Sep 2025 22:28:12 +0000
From: 	U.S. Patent and Trademark Office 
<subscriptioncenter at subscriptions.uspto.gov>
To: 	carl at oppedahl.com



Appeals Review Panel issues a new decision

	

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  Patent Trial and Appeal Board


    *Appeals Review Panel vacates PTAB new ground of rejection under 35
    U.S.C. § 101*

Today, an Appeals Review Panel consisting of Director John A. Squires, 
Acting Commissioner Valencia Martin Wallace, and Vice Chief Judge 
Michael W. Kim issued a decision in /Ex parte Desjardins/ that reverses 
the Patent Trial and Appeal Board’s new ground of rejection under § 101.

The application on appeal relates to training machine learning models, 
and reflects improvements in artificial intelligence (AI) technology 
that “‘us[e] less of their storage capacity,’ enables ‘reduced system 
complexity,’” and “‘effectively learn new tasks in succession whilst 
protecting knowledge about previous tasks.’”

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 stand rejected under § 103, demonstrating that §§ 102, 103, and 
112 are the traditional and appropriate tools to limit patent protection 
to its proper scope, and should be the focus of examination.

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