Today the USPTO published a decision called Ex parte Desjardins et alia, 2024-000567 (Appeals Review Panel, September 26, 2025). a copy of which may be seen here. It looks like this decision may be of some help to applicants facing 101 rejections.
In this case, a patent applicant appealed to the PTAB about a 103 rejection. The case reached a three-judge panel of the PTAB. The panel decided that in addition to ruling on the 103 rejection, it would sua sponte toss in a new ground of rejection under Section 101. A request for rehearing fell on deaf ears with this panel. The applicant didn’t like that much and appealed to the Appeals Review Panel. This panel is USPTO Director John Squires (who took office three days prior to this decision) and Acting Commissioner for Patents Valencia Wallace and Chief Administrative Patent Judge Michael Kim.
The ARP scolded the three-judge panel and reversed. Here is a paragraph from page 9 of the decision:
Under a charitable view, the overbroad reasoning of the original panel below is perhaps understandable given the confusing nature of existing § 101 jurisprudence, but troubling, because this case highlights what is at stake. Categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology. Yet, under the panel’s reasoning, many AI innovations are potentially unpatentable – even if they are adequately described and nonobvious – because the panel essentially equated any machine learning with an unpatentable “algorithm” and the remaining additional elements as “generic computer components,” without adequate explanation. … Examiners and panels should not evaluate claims at such a high level of generality.
It has gotten to the point where every one of my pending cases that has software or AI or a neural network or a large language model in it gets automatically rejected under Section 101. And yes, in each of those cases, the Examiner routinely ignores the paragraphs of experimental results showing the improvements that the invention provides. I think it’s likely that going forward, when I respond to such an Office Action, I will be quoting this paragraph in the response.
I think it is extremely sad that the decision specifically cites “America’s leadership” as the thing that needs to be protected. I worry that the decision might signal to the Examiner that the citizenship or domicile of the applicant is somehow relevant in deciding whether the 101 rejection should be imposed.
Interesting decision. It’s worth noting that the applicant cannot appeal to the ARP. A case must be brought to the ARP sua sponte by the director.
Thank you for commenting. This is a very good point.