In our earlier posts, we discussed the significance of Ex Parte Desjardins: first when the Appeals Review Panel vacated the § 101 rejection, and again when Director Squires designated the decision as precedential.

Today, the USPTO has taken the next step: it has formally issued a memo to the examining corps announcing updates to the MPEP that incorporate Desjardins directly into the Office’s subject-matter eligibility framework.

Key Highlights from the Memo

  • Desjardins is now expressly embedded in the MPEP.
    The memo confirms revisions to MPEP §§ 2106.04(d) and 2106.05, codifying Desjardins as an example of when claims directed to machine-learning innovations are not abstract but instead improve computer functionality. These updates make the reasoning of Desjardins part of the day-to-day examination framework.
  • AI/ML improvements must be treated as technological improvements.
    Examiners are directed to treat enhancements such as reduced storage, lowered system complexity, improved task-learning behavior, and mitigation of catastrophic forgetting as evidence of a technical improvement under Step 2A Prong Two, thereby aligning Desjardins with cases like Enfish and McRO.
  • Examiners are cautioned not to oversimplify AI/ML claims.
    The memo quotes the ARP’s caution against evaluating claims “at such a high level of generality” that meaningful technical elements are dismissed as generic computer components.

Why This Matters (and How It Builds on Prior Developments)

In our earlier posts, we noted that Desjardins signaled a meaningful policy shift toward recognizing software- and AI-based improvements as patent-eligible when they enhance system operation. By elevating Desjardins to precedential status, the USPTO made that shift binding.

Today’s memo operationalizes the shift: the formal revisions to the MPEP instructs examiners to analyze AI/ML inventions under the Desjardins → Enfish/McRO framework, rather than defaulting to broad “abstract idea” rejections.

Looking Ahead

With Desjardins now both precedential and formally incorporated into the MPEP, applicants should expect more consistent § 101 treatment for AI and machine-learning inventions, greater weight placed on disclosed technical improvements, fewer rejections based on oversimplified characterizations of machine learning, and stronger alignment between examiner practice and Federal Circuit precedent.

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