Ex parte Desjardins

UNITED STATES PA TENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONERFORPATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. 	FILING DATE 	FIRST NAMED INVENTOR 	ATTORNEY DOCKET NO. 	CONFIRMATION NO.
16/319,040 	01/18/2019 	Guillaume Desjardins 	45288-8015US 1 	2007
151793 	7590 	09/26/2025 	EXAMINER
FISH & RICHARDSON P.C. TRIEU,EMN	
PO BOX 1022
MINNEAPOLIS, MN 55440-1022 ART UNIT 	PAPER NUMBER
2128
NOTIFICATION DATE 	DELIVERY MODE
09/26/2025 	ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE APPEALS REVIEW PANEL OF THE
PATENT TRIAL AND APPEAL BOARD
Ex parte GUILLAUME DESJARDINS, RAZVAN PASCANU,
RAIA THAIS HADSELL, JAMES KIRKPATRICK,
JOEL WILLIAM VENESS, and NEIL CHARLES RABINOWITZ
Appeal2024-000567
Application 16/319,040
Technology Center 2100
Before JOHN A. SQUIRES, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
VALENCIA MARTIN WALLACE, Acting Commissioner for Patents, and
MICHAEL W. KIM, Vice Chief Administrative Patent Judge.
SQUIRES, Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office.
DECISION ON REQUEST FOR REHEARING
I. 	INTRODUCTION
This Appeals Review Panel ("ARP") was convened to review the
Board's Decision on Appeal ("Dec.") and Decision on Request for
Rehearing ("Reh'g Dec."), with particular focus on the Board's new ground
of rejection of claims 1-6 and 8-20 under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b ).

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Application 16/319,040
On review, we vacate the Board's new ground of rejection. We do not
disturb the Board's previous decisions in any other respects.
II. 	BACKGROUND
A. 	Claimed Invention
Application No. 16/319,040 relates to training machine learning
models. Specification ("Spec.") ,r 2. Independent claim 1 reads:
1. 	A 	computer-implemented 	method 	of training 	a
machine learning model,
wherein the machine learning model has at least a plurality
of parameters and has been trained on a first machine learning
task using first training data to determine first values of the
plurality of parameters of the machine learning model, and
wherein the method comprises:
determining, for each of the plurality of parameters, a
respective measure of an importance of the parameter to the first
machine learning task, comprising:
computing, based on the first values of the plurality
of parameters determined by training the machine learning
model on the first machine learning task, an approximation
of a posterior distribution over possible values 	of the
plurality of parameters,
assigning, using the approximation, a value to each
of 	the 	plurality 	of 	parameters, 	the 	value 	being 	the
respective measure of the importance of the parameter to
the 	first 	machine 	learning 	task 	and 	approximating 	a
probability that the first value of the parameter after the
training on the first machine learning task is a correct
value of the parameter given the first training data used to
train the machine learning model on the first machine
learning task;
obtaining second training data for training the machine
learning model on a second, different machine learning task; and
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Application 16/319,040
training 	the 	machine 	learning 	model 	on 	the 	second
machine learning task by training the machine learning model on
the second training data to 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,
wherein 	adjusting 	the 	first 	values 	of the 	plurality 	of
parameters comprises adjusting the first values of the plurality of
parameters to optimize an objective function that depends in part
on a penalty term that is based on the determined measures of
importance of the plurality of parameters to the first machine
learning task.
Appeal Br. 16 (Claims Appendix).
The Specification discloses:
Particular embodiments of the subject matter described in
this specification can be implemented so as to realize one or more
of the following advantages. By training the same machine
learning 	model 	on 	multiple 	tasks 	as 	described 	in 	this
specification, once the model has been trained, the model can be
used for each of the multiple tasks with an acceptable level of
performance. As a result, systems that need to be able to achieve
acceptable performance on multiple tasks can do so while using
less 	of 	their 	storage 	capacity 	and 	having 	reduced 	system
complexity. For example, by maintaining a single instance of a
model rather than multiple different instances of a model each
having different parameter values, only one set of parameters
needs to be stored rather than multiple different parameter sets,
reducing the amount of storage space required while maintaining
acceptable performance on each task. In addition, by training the
model on a new task by adjusting values of parameters of the
model to optimize an objective function that depends in part on
how important the parameters are to previously learned task(s),
the model can effectively learn new tasks in succession whilst
protecting knowledge about previous tasks.
Spec. if 21.
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B. Procedural History
On March 4, 2025, a Board panel issued a Decision on Appeal
(1) affirming the rejection of all pending claims 1-6 and 8-20 under
35 U.S.C. § 103 (one judge entered an opinion concurring-in-part, and
would have reversed this rejection), and (2) entering a new ground of
rejection of claims 1-6 and 8-20 under 35 U.S.C. § 101. On May 5, 2025,
the Appellant1 filed a Request for Rehearing ("Req."), and addressed the
new ground of rejection. Req. 7-10. On July 14, 2025, the Board panel
issued a Decision on Request for Rehearing denying the Request in all
respects.
C. Principles of Law and the Manual of Patent Examining
Procedure ("MP EP '')
35 U.S.C. § 101 provides that "[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor."
Section 101, however, "contains an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013)). Alice identifies a framework for determining whether claimed
subject matter is directed to an abstract idea. Id. at 21 7. According to Al ice,
"[w]e must first determine whether the claims at issue are directed to a
patent-ineligible concept." Id. at 218 (emphasis added).
1 The "Appellant" refers to the "applicant" as defined in 37 C.F.R. § l.42(a)
(2022). The Appellant identifies DeepMind Technologies Limited as the real
party in interest. Appeal Br. 1.
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Application 16/319,040
Under Alice step one, we consider whether the claims at issue are
directed to patent-ineligible subject matter, here, an abstract idea.
This "directed to" inquiry does more than "simply ask whether
the claims involve a patent-ineligible concept." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (emphasis
in original). Instead, we must look to the character of the claims
as a whole to determine whether they are "directed to" patent
ineligible subject matter. Id.
AI Visualize, Inc. v. Nuance Commc 'ns, Inc., 97 F.4th 1371, 1378 (Fed. Cir.
2024 ). If so, the next step is "a search for an 'inventive concept'-i. e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Alice, 573 U.S. at 217-18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012))
(alteration in original).
The MPEP describes the process the Office follows in evaluating
whether a claim is drawn to patent-eligible subject matter under § 101. See
MPEP § 2106. Consistent with the statute, the process entails, at Step 1,
determining whether the claimed subject matter falls within one of the four
statutory categories of invention (i.e., process, machine, manufacture, or
composition of matter). See MPEP § 2106.03. Consistent with Alice's two
part framework, Step 2 of the process is a two-part test to identify whether
claims are directed to a judicial exception, i.e., an abstract idea, law of
nature, or natural phenomenon (Step 2A; see MPEP § 2106.04), and then to
evaluate if additional elements of the claim provide an inventive concept;
that is, whether they provide "significantly more" than the recited judicial
exception (Step 2B; see MPEP § 2106.05).
Step 2A is a two-pronged inquiry. "Prong One asks does the claim
recite an abstract idea, law of nature, or natural phenomenon?" MPEP
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§ 2106.04(II)(A)(l). "Prong Two asks does the claim recite additional
elements that integrate the judicial exception into a practical application?"
MPEP § 2106.04(II)(A)(2). Only after a determination is made that the claim
recites a judicial exception under the Prong One inquiry do we proceed to
the Prong Two inquiry, and then to Step 2B. "The Step 2A Prong One
analysis articulated in MPEP § 2106. 04 ... requir[ es] a claim to recite (i.e.,
set forth or describe) an abstract idea in Prong One before proceeding to the
Prong Two inquiry .... " MPEP § 2106.04(a)(l). If, at Prong Two, the claim
as a whole is not directed to a judicial exception, the eligibility analysis is
concluded. MPEP § 2106.04(II)(A)(2).
III. 	ANALYSIS
The Board's decisions and the Appellant's arguments focus on MPEP
Step 2A (Alice Step One). See Dec. 20-23; Req. 7-9; Reh'g Dec. 5-7.
Accordingly, we confine our discussion to Step 2A, as that resolves our
A. Alice Step One; MP EP Step 2A, Prong One
Independent claim 1 recites "computing ... , an approximation of a
posterior distribution over possible values of the plurality of parameters."
Independent claims 18 and 19 recite similar limitations. Appeal Br. 20-21
(Claims App.). In entering the new ground of rejection, the Board
determined that at least this limitation recites a mathematical calculation,
which is a mathematical concept, and, thus, an abstract idea. Dec. 20-21.
For this limitation, the Appellant neither disputed that the limitation recites
an abstract idea, nor identified the limitation as reciting features that confer
technical improvements. Req. 7-8. We see no reason to disturb this
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undisputed finding, and so because independent claims 1, 18, and 19 each
recite at least one abstract idea, we proceed to the next part of our analysis
MPEP Step 2A, Prong Two.
B. Alice Step One; MP EP Step 2A, Prong Two
The Board determined next that "we discern no additional element (or
combination of elements) recited in Appellant's claims 1, 18, and 19 that
may have integrated the judicial exception into a practical application."
Dec. 22. The Appellant disagrees, asserting that "the claims recite additional
elements that reflect '[a]n improvement in the functioning of a computer, or
an improvement to other technology or technical field,' as discussed in
MPEP §§ 2106.04(d)(l) and 2106.05(a)." Req. 7. In particular, the
Appellant identifies certain limitations of independent claim 1 and asserts
that "the claimed subject matter provides technical improvements over
conventional systems by addressing challenges in continual learning and
model efficiency by reducing storage requirements and preserving task
performance across sequential training," citing paragraph 21 of the
Specification for support. Id. at 7-9; see also id. at 8 ("This training strategy
allows the model to preserve performance on earlier tasks even as it learns
new ones, directly addressing the technical problem of 'catastrophic
forgetting' in continual learning systems."). We agree with the Appellant.
The determination requires us to "evaluate the significance of the
additional elements relative to the invention," while being mindful that "the
ultimate question" is "whether the exception is integrated into a practical
application." MPEP § 2106.04(d)(II). On the one hand, claims "[g]enerally
linking the use of a judicial exception to a particular technological
environment or field of use" are not patent eligible. See MPEP § 2106.05(h)
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(citing Affinity Labs of Tex. v. DirecTV, LLC, 838 F .3d 1253 (Fed. Cir.
2016) and Elec. Power Grp., LLC v. Alstom SA., 830 F.3d 1350, 1354 (Fed.
Cir. 2016)). On the other, claims directed to an improvement in the
functioning of a computer, or an improvement to other technology or
technical field are patent eligible. See MPEP §§ 2106.04(d)(l) and
2106.05(a) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339
(Fed. Cir. 2016) andMcRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1315 (Fed. Cir. 2016)).
Enfish ranks among the Federal Circuit's leading cases on the
eligibility of technological improvements. In particular, Enfish recognized
that "[m ]uch of the advancement made in computer technology consists of
improvements to software that, by their very nature, may not be defined by
particular physical features but rather by logical structures and processes."
822 F.3d at 1339. Moreover, because "[s]oftware can make non-abstract
improvements to computer technology, just as hardware improvements can,"
the Federal Circuit held that the eligibility determination should turn on
whether "the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea." Id. at 1336.
Paragraph 21 of the Specification, which the Appellant cites,
identifies improvements in training the machine learning model itself. Of
course, such an assertion in the Specification alone is insufficient to support
a patent eligibility determination, absent a subsequent determination that the
claim itself reflects the disclosed improvement. See MPEP § 2106.05(a)
(citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316
(Fed. Cir. 2016)). Here, however, we are persuaded that the claims reflect
such an improvement. For example, one improvement identified in the
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Specification is to "effectively learn new tasks in succession whilst
protecting knowledge about previous tasks." Spec. ,r 21. The Specification
also recites that the claimed improvement allows artificial intelligence (AI)
systems to "us[ e] less of their storage capacity" and enables "reduced system
complexity." Id. When evaluating the claim as a whole, we discern at least
the following limitation of independent claim 1 that reflects the
improvement: "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." We are persuaded that constitutes an
improvement to how the machine learning model itself operates, and not, for
example, the identified mathematical calculation.
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. Dec. 24.
Examiners and panels should not evaluate claims at such a high level of
generality.
However, it is with this view that the panel's sua sponte action is most
troubling, as it eschewed the clear teachings of Enfish, and instead
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Application 16/319,040
substituted only a cursory analysis that ignored this well-settled precedent.
Panels should treat such precedent with more care, especially when acting
sua sponte.
At the same time, the claims at issue stand rejected under§ 103. This
case demonstrates that§§ 102, 103 and 112 are the traditional and
appropriate tools to limit patent protection to its proper scope. These
statutory provisions should be the focus of examination.
For these reasons, we determine that although independent claim 1
may recite an abstract idea, it is not directed to an abstract idea. Instead, we
determine that independent claim 1, when considered as a whole, integrates
an abstract idea into a practical application. Our analysis is also applicable to
independent claims 18 and 19, and all pending dependent claims 2-6, 8-17,
and 20.
IV. 	CONCLUSION
In sum, we vacate the Board's New Ground of Rejection. We do not
disturb the Board's previous decisions in any other respects.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
10