USPTO Adds Desjardins to MPEP Subject Matter Eligibility Guidance

The United States Patent and Trademark Office (USPTO) has issued an advance notice of change to the Manual of Patent Examining Procedure (MPEP) to incorporate Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel (ARP) Decision), a decision addressing subject matter eligibility under § 101.¹ In Desjardins, the ARP faulted a Patent Trial and Appeal Board (PTAB) panel for evaluating a machine learning claim at too high a level of generality at Alice Step 2A, Prong Two (integration of judicial exception into practical application), explaining that Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) is the proper precedent under which to evaluate claims directed to improvements to the functioning of a computer or other technology or technical field. The updates to the MPEP thus reflect the latest developments in the controlling case law, clarify examiners’ responsibilities when examining claims directed to technological improvements, and provide additional examples of patent-eligible improvements based on Desjardins.

Key point

• The USPTO has updated the MPEP to incorporate Desjardins, a precedential ARP decision that directs patent examiners to consider Enfish when evaluating claims directed to improvements to the functioning of a computer or other technology or technical field.

Digging deeper

In Desjardins, the ARP ranked Enfish among the Federal Circuit’s leading cases on the eligibility of technological improvements. Enfish recognized that many advancements to computer technology consist of improvements to software rather than hardware, but that software can nonetheless make non-abstract improvements to computer technology just as hardware can. Finding that the PTAB panel below had performed only a cursory analysis of the claims at issue and had ignored well-settled precedent (including Enfish), the ARP in Desjardins found the claims at issue patent-eligible at Alice Step 2A, Prong 2 because they identified technological improvements to the functioning of a machine learning model. The ARP then directed patent examiners and the PTAB to engage in more thorough analysis of whether a patent claim integrates an abstract idea into a practical application at Alice Step 2A, Prong 2, specifically by considering Enfish.

The updates to the MPEP incorporate Desjardins into § 2106. Major updates include:

• MPEP § 2106.04(d), subsection III is updated to add Desjardins as an example of a claim that integrates a judicial exception into a practical application.
• MPEP § 2106.04(d)(1), second paragraph is revised to add Desjardins as an example of a patent application in which the specification identified an improvement to the technology and the claims reflected the improvement identified in the specification.
• MPEP § 2106.05(a), fourth and fifth paragraphs are revised to cite Desjardins for the directive that examiners should not evaluate claims at such a high level of generality that potentially meaningful technological limitations are dismissed or considered as mere generic computer components.
• MPEP § 2106.05(a), second paragraph, subsection I is revised to add two examples of improvements to computer functionality from Desjardins.
• MPEP § 2106.05(f), ninth paragraph is revised to add Desjardins as an example of claims in which additional elements do more than merely “apply it” or are not “mere instructions” when reciting a technological solution to a technological problem.

Takeaways

The guidance emphasizes the importance of explaining improvements to technology that result from the claimed processes within the specification itself. And while the guidance is yet to be implemented, applicants prosecuting applications that recite improvements to artificial intelligence and machine learning and who are currently facing § 101 rejections may have reason to keep their applications pending, as the outlook for such inventions appears increasingly promising. This is especially true for applications that describe techniques for training machine learning models.

At a high level, the MPEP updates are another signal that Director Squires intends to broaden subject matter eligibility to the benefit of cutting-edge technologies, most notably artificial intelligence and machine learning, that previously were considered on the borderline of patentability.