The examination manual now lists improving how a machine learning model trains as an improvement to technology

2025-12-05USPTO

Memorandum, "Advance notice of change to the MPEP in light of Ex Parte Desjardins" (Dec. 5, 2025), from Charles Kim, Deputy Commissioner for Patents, to the Patent Examining Corps; Memorandum, "Subject Matter Eligibility Declarations" (Dec. 4, 2025), from John A. Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, to the Patent Examining Corps

The United States Patent and Trademark Office revised Sections 2106.04(d), 2106.05(a) and 2106.05(f) of the Manual of Patent Examining Procedure to incorporate Ex parte Desjardins, the Appeals Review Panel decision of September 26, 2025 designated precedential on November 4, 2025. Section 2106.05(a) adds two examples of technological improvements: "An improved way of training a machine learning model that protected the model's knowledge about previous tasks" and "Improvements to computer component or system performance based upon adjustments to parameters of a machine learning model." Section 2106.04(d) now summarizes Desjardins, where a claim to training a model on a series of tasks recited a mathematical concept but integrated it into a practical application because the specification described improvements to how the model operates, including overcoming catastrophic forgetting. Examiners are told not to evaluate claims "at such a high level of generality" that technical limitations are dismissed, nor to dismiss elements as generic computer components without considering whether they provide an improvement, and that "the claim must include the components or steps of the invention that provide the improvement described in the specification," though it need not recite the improvement. The Director's December 4 memorandum on Subject Matter Eligibility Declarations requires examiners to weigh on its merits an optional declaration under 37 C.F.R. 1.132 offering expert testimony or objective data on a technological improvement.

What it changesEvery response to an eligibility rejection of a machine learning claim under Section 101 of Title 35 of the United States Code should now cite Section 2106.05(a) examples xiii and xiv and the Desjardins paragraph in Section 2106.04(d), because the manual binds the examiner in a way an argument from a single Appeals Review Panel decision did not. The drafting rule is stated in the manual's own words: the specification has to describe the improvement to how the model trains or runs, and the claim has to contain the steps that produce it. That is the line between Desjardins and Recentive Analytics v. Fox, where applying a generic model to a new data environment was abstract. The declaration route rewards keeping evidence in the invention record, such as ablation results, memory and latency measurements and benchmark comparisons, because a declaration can prove an improvement the specification describes but cannot add one it omits. The manual governs examiners only; courts apply Recentive.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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