Director Squires, Section 101, and Why Patent Applicants Should Temper Their Enthusiasm

[1]

A More Favorable USPTO Climate, But Not a New Legal Regime

Patent applicants have understandable reasons for optimism about recent USPTO developments under 35 U.S.C. Section 101. Since Director Squires took office, the USPTO has issued a series of memoranda emphasizing careful Step 2A analysis, warning examiners not to overextend the “mental process” grouping, reminding examiners to evaluate the claim as a whole, and encouraging the use of Rule 132 Subject Matter Eligibility Declarations (“SMEDs”) in appropriate cases.[2] The Office also designated Ex parte Desjardins[3] as precedential, giving applicants a favorable Board decision that treats a claimed machine-learning invention as patent eligible because the claims, considered as a whole, improved operation of the model itself.[4] For applicants who have spent years navigating an eligibility regime shaped by Alice and its progeny, these developments naturally look like a meaningful broadening of patent eligibility.

But applicants should be careful not to confuse a more favorable administrative posture with a meaningful change in governing law. The central legal point remains unchanged: USPTO guidance is not itself the law of patent eligibility. In In re Rudy,[5] the Federal Circuit said exactly that, holding that the Office Guidance “is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding” in the court’s patent-eligibility analysis.[6] The court further explained that Supreme Court precedent and Federal Circuit precedent continue to control the analysis.[7] The same theme appears elsewhere. In In re Smith,[8] the Federal Circuit rejected a challenge based on PTO eligibility guidance, explaining that such guidance creates no enforceable rights and is not binding on the court.[9] In Cleveland Clinic Foundation v. True Health Diagnostics LLC,[10] the court likewise declined to follow PTO guidance where controlling precedent pointed elsewhere.[11] And in In re Abel,[12] the court reiterated that the USPTO Guidance “does not bind us.”[13]

The PTAB’s Own Decisions Warn Against Overreading USPTO Authority

That same caution applies not only to examiner memoranda, but also to favorable PTAB decisions. To be sure, Ex parte Desjardins is more important than recent memoranda because it is precedential Board authority rather than mere internal guidance.[14] But even that status should not be overstated. The Federal Circuit has squarely warned that favorable PTAB decisions do not become binding law simply because the Board has designated them precedential within the agency. In ENCO Systems v. DaVincia, LLC,[15] the court stated: “We are not bound by internally precedential decisions of the Patent Trial and Appeal Board that seek to follow this court’s precedents, which we apply directly.”[16] That quote is important because it sharply limits how much weight applicants should place on any single Board decision, including Desjardins. Whatever force such a decision may have within the Office, it does not alter the law that a reviewing court will apply.

The PTAB’s own § 101 decisions reinforce the same point. In a recurring formulation that appears across multiple Board decisions, the PTAB has expressly acknowledged that its eligibility analysis is ultimately controlled not by USPTO guidance itself, but by Supreme Court and Federal Circuit precedent. As the Board has explained:

“Our reviewing court has warned that ‘the Office Guidance is not, itself, the law of patent eligibility’ and ‘does not carry the force of law.’ In re Rudy, 956 F.3d 1379, 1382 (Fed. Cir. 2020); see also cxLoyalty, Inc. v. Maritz Holdings Inc., No. 2021-1307, 2021 WL 416719, *6 n.1 (Fed. Cir. Feb. 8, 2021); Cleveland Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x 1013, 1020 (Fed. Cir. 2019). Rather, ‘it is our [reviewing court’s] caselaw, and the Supreme Court precedent it is based upon, that must control.’ Rudy, 956 F.3d at 1383 (citation omitted). Thus, although our analysis may be framed in terms of the 2019 Revised Guidance, our decision is based upon governing precedent of the United States Supreme Court and our reviewing court’s interpretation and application thereof.”

This formulation appears repeatedly in PTAB § 101 decisions.[17] The significance of that recurring PTAB language is not merely that it quotes Rudy. It is that the Board is expressly disclaiming any independent authority to redefine eligibility. The Board is saying, in substance, that its use of the 2019 Revised Guidance is only an analytical framework, not a separate source of substantive law.

That repeated PTAB disclaimer is especially important when read alongside ENCO. Taken together, the PTAB’s recurring Rudy-based formulation and the Federal Circuit’s statement in ENCO establish a two-level limitation on the significance of recent Board decisions. First, internal Office guidance does not itself supply the governing law. Second, even PTAB decisions designated precedential within the agency do not become controlling law outside the agency. That means recent PTAB decisions should be understood for what they are: potentially useful applications of existing appellate precedent, not independent doctrinal developments. Put differently, when the Board says its analysis is merely “framed in terms of the 2019 Revised Guidance” but “based upon governing precedent,” it is effectively warning practitioners not to mistake the Board’s analytical framework for a source of binding substantive law.

The Board’s older decisions say much the same thing in a slightly different form. In Ex parte Seltzer,[18] the Board explained that USPTO guidance materials were developed as a matter of internal Office management, that failure of Office personnel to follow those materials is not itself a proper basis for appeal or petition, and that the Board decides appeals under § 101 as interpreted by the Supreme Court and the Federal Circuit.[19] Seltzer and the recurring Rudy quotation point in the same direction: even the Board does not present guidance as binding law. Instead, the Board consistently portrays itself as implementing judicial precedent through an administrative framework.

What Desjardins and the 2025 Memos Actually Do

This substantially tempers the significance of decisions like Desjardins. Even assuming Desjardins is an important and favorable PTAB authority, the Board’s own repeated language makes clear that such a decision does not stand as a free-floating expansion of § 101. At most, it reflects the Board’s view that existing Supreme Court and Federal Circuit precedent permits eligibility on particular facts involving a specifically claimed technological improvement. And even that view remains subject to direct Federal Circuit review under ENCO, where the court will apply its own precedent rather than defer to the Board’s internal characterization of that precedent. So, when applicants point to Desjardins and similar PTAB decisions as evidence that the Board has become more receptive to eligibility arguments, the fair response is yes, perhaps institutionally so, but those same decisions also insist that they are not changing the governing law. Their force lies in persuasion and internal agency administration, not in any power to supersede Alice, Mayo, Rudy, or the Federal Circuit’s broader  101 jurisprudence.

The August 4, 2025 § 101 memorandum is a useful illustration. It is, in several respects, applicant-friendly. It reminds examiners that the “mental process” grouping is not without limits, warns them not to expand that grouping to encompass limitations that cannot practically be performed in the human mind, and emphasizes that claims should be evaluated as a whole at Step 2A Prong Two.[20] It also instructs examiners not to make a § 101 rejection simply because eligibility is uncertain, but instead to apply the ordinary preponderance-of-the-evidence standard.[21] Those are meaningful directives. But the memorandum also expressly states that it “is not intended to announce any new USPTO practice or procedure.”[22] It is, therefore, best understood as an effort to improve examination quality within the existing framework, not as a revision of the framework itself.

The December 4, 2025 SMED memoranda should be read the same way. Director Squires’s public memorandum frames separate SMEDs as a “best practice” and says they should be submitted separately rather than combined with declarations addressing obviousness or other issues.[23] The examiner memorandum likewise describes SMEDs as an existing voluntary option under Rule 132, explains that such declarations can help clarify the record, and states that the memorandum does not announce any new USPTO practice or procedure.[24] The examiner memorandum also notes that declarations may be useful where they explain how a person of ordinary skill in the art would understand a specification describing a technological improvement, but it simultaneously makes clear that the evidentiary submission must still have a nexus to the claimed invention and be evaluated under existing standards.[25] These memoranda may help applicants develop a better prosecution record, but they do not change the legal test that will govern in later litigation or appeal.

Ex parte Desjardins is still important. The Appeals Review Panel concluded there that the claims, considered as a whole, integrated any abstract idea into a practical application because they improved the technology itself. The decision credited the claimed approach with addressing continual learning, reducing storage requirements, reducing system complexity, and preserving performance across sequential training tasks.[26] Those are exactly the kinds of concrete technical improvements that have traditionally mattered under § 101. In that respect, Desjardins is a helpful reminder that strong software and AI claims can still succeed when they are framed as specific technological solutions to technological problems.

But that is also why applicants should not overread it. Properly understood, Desjardins fits comfortably within the established line of cases holding that claims may satisfy § 101 when they are directed to a specific improvement in computer functionality or another technical field. It is not a signal that all AI, software, fintech, or diagnostics claims are now safe. Nor does it mean the Federal Circuit will defer to the Board’s internal precedential designations. ENCO forecloses that premise directly. The Federal Circuit will continue to “apply directly” its own precedents, just as Rudy says it must.[27]

Practical Consequences for Applicants and Prosecutors

That has practical consequences for prosecution strategy. A friendlier USPTO may improve allowance prospects, especially in close cases. But patents do not live only in examination. They must later survive scrutiny in district court, at the Federal Circuit, and sometimes again before the PTAB in a posture constrained by appellate law. A prosecution strategy built too heavily on favorable internal memoranda or on an expansive reading of favorable PTAB decisions, without a record showing an actual technical improvement grounded in the claims and specification, may therefore produce patents that look stronger at issuance than they ultimately prove to be.

The same caution applies to declarations. A well-crafted SMED may be useful where it explains, with proper evidentiary support, how a skilled artisan would understand the invention to improve a technical system or why a particular limitation cannot practically be performed in the human mind.[28] But a declaration is not a substitute for sound drafting. If the claims do not recite a meaningful technological implementation, and if the specification does not clearly articulate a technical problem and technical solution, a declaration will rarely rescue the case. Indeed, the examiner memorandum suggests that the most durable eligibility showings are those grounded in the specification itself.[29] 

Conclusion

The better view, then, is not that Director Squires has broadened patent eligibility in any formal doctrinal sense. Rather, the USPTO under his leadership appears to be trying to ensure that examiners apply § 101 more carefully, more evenly, and with greater sensitivity to technological substance. That is significant. It may lead to fewer reflexive § 101 rejections, a narrower and more disciplined use of the “mental process” category, and a greater willingness to credit real technological improvements. But it does not change the hierarchy of authority. The governing law still comes from the Supreme Court and the Federal Circuit. Rudy says guidance is not binding. ENCO says internally precedential PTAB decisions are not binding. And the PTAB itself, in Seltzer, has recognized that Board appeals are decided under judicial precedent, not merely agency guidance.

Applicants and practitioners should therefore welcome the change in tone without overstating its legal effect. The prudent course is to prosecute as though a later court, not the current examination climate, will have the final word. That means drafting specifications that clearly describe the technical problem and technical solution. It means ensuring the claims do more than invoke computers, machine learning, or automation as generic tools. It means using Desjardins where the facts genuinely fit. And it means using SMEDs selectively, as evidentiary support for an already well-grounded technological narrative, rather than as a substitute for one. Director Squires may have made the USPTO a more receptive forum for strong eligibility arguments. He has not repealed Alice.

References

[1] Photo by Theo Crazzolara, A Light Bulb with a Flame, Unsplash (Aug. 26, 2022), https://unsplash.com/photos/a-light-bulb-with-a-flame-xDyv5ZItvkY.

[2] See U.S. Patent & Trademark Office, Memorandum from Charles Kim, Deputy Comm’r for Patents, to Tech. Ctrs. 2100, 2600, and 3600, Reminders on Evaluating Subject Matter Eligibility of Claims Under 35 U.S.C. 101 1, 5 (Aug. 4, 2025); see also U.S. Patent & Trademark Office, Memorandum from John A. Squires, Under Sec’y of Com. for Intell. Prop. & Dir. of the U.S. Patent & Trademark Office, Memorandum to All Patent Applicants and Patent Practitioners, Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs) 1 (Dec. 4, 2025); U.S. Patent & Trademark Office, Memorandum to the Examining Corps, Subject Matter Eligibility Declarations Under 37 C.F.R. § 1.132 2–3 (Dec. 4, 2025).

[3]See  No. 2024-000567, slip op. at 7 (P.T.A.B. Nov. 4, 2025) (precedential).

[4] See Ex parte Desjardins, No. 2024-000567, slip op. at 7 (P.T.A.B. Nov. 4, 2025) (precedential).

[5] 956 F.3d 1379 (Fed. Cir. 2020).

[6] See In re Rudy, 956 F.3d 1379, 1382 (Fed. Cir. 2020).

[7] See id. at 1382–83.

[8] 815 F.3d 816, 819 (Fed. Cir. 2016).

[9] See In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016).

[10] 760 F. App’x 1013, 1020 (Fed. Cir. 2019) (nonprecedential).

[11] See Cleveland Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x 1013, 1020 (Fed. Cir. 2019) (nonprecedential).

[12] 838 F. App’x 558, 560 (Fed. Cir. 2021) (nonprecedential).

[13] See In re Abel, 838 F. App’x 558, 560 (Fed. Cir. 2021) (nonprecedential).

[14] See Ex parte Desjardins, No. 2024-000567, slip op. at 1 (P.T.A.B. Nov. 4, 2025) (precedential).

[15] 845 F. App’x 953, 957–58 (Fed. Cir. 2021) (nonprecedential).

[16] See ENCO Sys. v. DaVincia, LLC, 845 F. App’x 953, 957–58 (Fed. Cir. 2021) (nonprecedential).

[17] See Google LLC v. RFCyber Corp., PGR2021-00028, Paper 10 (P.T.A.B. July 23, 2021); see also IronSource Ltd. v. Digital Turbine Inc., PGR2021-00096, Paper 14 (P.T.A.B. Jan. 6, 2022); Ex parte Angela Richards Jones, Appeal 2018-008427 (P.T.A.B. July 30, 2020); Ex parte Stephen D. Patek, Appeal 2023-004004 (P.T.A.B. Mar. 21, 2025).

[18] See Appeal 2016-008568, Application 13/378,054, at 3–4 (P.T.A.B. Sept. 18, 2017).

[19] See Ex parte Seltzer, Appeal 2016-008568, Application 13/378,054, at 3–4 (P.T.A.B. Sept. 18, 2017).

[20] See Kim Memo, supra note 2, at 2–5.

[21] See id. at 5.

[22] See Kim Memo, supra note 2, at 1.

[23] See Squires Memo, supra note 2, at 1.

[24] See Examiner Memo, supra note 2, at 2.

[25] See id. at 1–3.

[26] See Ex parte Desjardins, No. 2024-000567, slip op. at 7; see also id. at 3 (quoting Spec. ¶ 21).

[27] See ENCO Sys., 845 F. App’x at 957–58; see also In re Rudy, 956 F.3d at 1382–83.

[28] See Examiner Memo, supra note 2, at 2–3; see also Squires Memo, supra note 2, at 1.

[29] See Examiner Memo, supra note 2, at 2–3.