Source: Brownstein Hyatt Farber Schreck

Recent USPTO guidance and Federal Circuit case law have clarified that Section 101 eligibility for software, AI, and ML claims depends on whether claims recite specific technological improvements rather than mere generic data manipulation. The USPTO designated Ex parte Desjardins as precedential in late 2025, holding that claims to training or optimizing machine learning models can be patent-eligible at Step 2A, Prong Two when they improve the model’s internal operation; MPEP § 2106.04(d) Subsection III now recognizes benefits such as reduced storage, reduced system complexity, and avoiding catastrophic forgetting as examples of eligible technical improvements. The PTAB in Ex parte Carmody (Dec. 30, 2025) rejected a narrow “model-only” limitation and confirmed that integrating an AI/ML engine into a broader workflow can be eligible if the claim, read as a whole, achieves a technological optimization.

By contrast, the Federal Circuit in In re Brian McFadden (April 2026) affirmed a rejection of an information-exchange apparatus where the algorithms merely calculated distribution differences at a high level of generality, stressing that abstract calculations implemented on standard hardware without a specific technological improvement remain ineligible. Practical prosecution takeaways include applying the “Desjardins Formula” by detailing non-conclusory technical problems and solutions in the specification and mirroring those details in independent claims (e.g., specific data structures, recursive loops, dynamic parameter updates); considering Rule 132 Subject Matter Eligibility Declarations (SMEDs) with caution because they can create a rigid prior-art record; and invoking the preponderance (>50%) evidentiary standard in MPEP §§ 706 and 2106 to challenge speculative § 101 rejections. The communication notes it is general information, not specific legal advice, and may be considered advertising; it was published June 2, 2026 and tagged under Intellectual Property and Patent Prosecution & Licensing.