By Mike Borella –

Late last week, the U.S. Patent and Trademark Office (USPTO) published three memos addressing its latest policies regarding subject matter eligibility.  These included “Subject Matter Eligibility Declarations” from Director Squires to the patent examining corps, “Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs)” from Director Squires to applicants and practitioners, and “Advance notice of change to the MPEP in light of Ex Parte Desjardins” from Deputy Commissioner Charles Kim.

The memos are part of Squires’ push to move the subject matter eligibility analysis under § 101 away from subjective legal notions toward a more rigorous, evidence-based framework.  Nonetheless, the underlying law surrounding eligibility remains structurally flawed due to its reliance on amorphous judicial exceptions that allow certain types of technical advances to be ignored.  Thus, these administrative remedies may ultimately fall short of resolving the systemic unpredictability that plagues § 101.

1.  Subject Matter Eligibility Declarations

The first memo is intended to “raise examiner awareness about the existing option for applicants to submit a declaration under 37 CFR 1.132, an underutilized path to proffer evidence to establish subject matter eligibility of the claimed invention.” Indeed, these declarations have been used by applicants since Alice v. CLS Bank came down in 2014, but have been a largely hit or miss affair. Given the amount of time and effort needed to research the facts behind an invention and craft a compelling narrative regarding its contribution, many applicants have chosen to forgo this option.

The memo sets the stage by reiterating rules for evidentiary declarations as set forth in M.P.E.P. § 716:

Any person who has knowledge of the facts being asserted in the declaration may sign the declaration (e.g., an inventor, an inventor’s co-worker, an independent expert, or others).  No special qualification other than knowledge of the facts is required . . . . The declaration must be timely filed to be entered and entitled to consideration.  In addition, the declaration must comply with other formalities.  Applicants are not required to submit an evidentiary declaration in an application, and applicants cannot be penalized for not submitting a declaration.

Importantly, “there must be a nexus between the invention as claimed and the evidence provided in the declaration.” In other words, the improvement provided by the invention and expounded upon in the declaration should at least be reflected in the claim language.  While a declaration may be used to supplement the disclosure in a specification by describing how it would be understood by a person of skill in the art as of the application’s filing date, it cannot be used to introduce new matter to the specification.

When the specification does not explicitly set forth the improvement but such an improvement would have been apparent, the declaration:

[M]ay provide facts that describe the state of the art at the time of filing, provide objective evidence as to how the invention improved upon the state of the art, or provide a factual basis for determining that one of ordinary skill in the art would have concluded that the invention improved the underlying technology.

Nonetheless, a declaration can only provide the factual basis that would support an outcome of eligibility, and any legal conclusions can be ignored.

Regarding an examiner’s consideration of the evidence presented, the memo states:

The examiner must carefully consider all of the applicant’s arguments and the evidence rebutting the subject matter eligibility rejection when evaluating the applicant’s response.  The evidence provided in the declaration must be taken into account whenever properly presented; however, such evidence alone would not necessarily control the eligibility determination because the examiner must weigh all relevant evidence of record and then determine whether the claims are eligible based on the preponderance of the evidence (i.e., more likely than not) standard.

Whether or not the examiner is persuaded by a declaration, the examiner must explain why they have withdrawn or maintained the § 101 rejection.

The memo ends with several examples, not of actual declarations but of how declarations might be used in practice.  This is where the memo falls short, as each example reiterates that a declaration must not improperly supplement the specification and must provide a nexus between the claimed invention and the proposed technical improvements.  But the exact nature of establishing technical improvements remains fact-intensive and specific to individual inventions.[1]  Thus, it is not clear exactly how an examiner is expected to go about the evaluation.

For patent applications written with rigorous support for the claimed invention being a specific technical improvement over the prior art (e.g., with statements of technical improvements and reminders of such improvements distributed throughout the text), it is unlikely that a subject matter eligibility declaration will move the needle.  However, specifications not written in this fashion, particularly older specifications, may benefit from this new initiative.

2.  Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs)

The second memo is perhaps the least interesting of the three.  Its main purpose is to remind applicants that subject matter eligibility declarations “should be submitted as separate documents and not combined with declarations or testimony addressing other issues, such as obviousness.” Notably, one is permitted to submit a combined declaration, but doing so is discouraged to “avoid the risk of intertwining issues of enablement, written description, novelty and nonobviousness with those of subject matter eligibility.”

3.  Advance notice of change to the M.P.E.P. in light of Ex Parte Desjardins

Finally, and perhaps most substantively, the M.P.E.P. is being updated to reflect Director Squires’ precedential ARP decision in Ex Parte Desjardins.  This memo includes several edits to § 2106 that effectively codify the reasoning behind the decision.  The memo begins by stating:

Examiners are expected to consider existing precedent like Enfish, as discussed in MPEP § 2106, in addition to these updates when assessing eligibility under 35 U.S.C § 101, particularly when evaluating claims related to machine learning or artificial intelligence.

Importantly, this reliance on Enfish should be not read to indicate that the reasoning of Desjardins is limited to machine learning inventions but is instead generally applicable.  For machine learning, however, Desjardins provides specific examples of how those types of inventions can be viewed as patent eligible.

Other key language added to various sections of the M.P.E.P. include:

The Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification . . . . In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems.  Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification.  Accordingly, the claims as a whole integrated what would otherwise be a judicial exception instead into a practical application at Step 2A Prong Two, and therefore the claims were deemed to be outside any specific, enumerated judicial exception.

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Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system.  Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation.

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When evaluating a claim as a whole, examiners should not dismiss additional elements as mere “generic computer components” without considering whether such elements confer a technological improvement to a technical problem, especially as to improvements to computer components or the computer system.

Each of these passages is quotable grist for the mill of § 101 rebuttals.  In recent weeks, applicants have taken to quoting the Desjardins decision in such rebuttals.  While doing so still has merit, directly addressing the new language of the M.P.E.P. should subsume and replace it.

Still, it is important to re-emphasize that applications written to explain how the claimed invention is a specific technical improvement over the prior art in as many ways as reasonably possible will almost certainly fare better than those that are not.  But until Congress or the Supreme Court intervenes to fix the broken foundation of § 101, these administrative updates merely allow applicants to navigate the maze of eligibility with slightly better maps.  The ground remains as shaky as ever.

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[1] For example, the memo states that performance results can be supplied if they were not included in the specification.