SMEDs in the Spotlight: USPTO Memo Highlights Use of Rule 132 Declarations for § 101

The memorandum builds on the precedential Appeals Review Panel decision in In re Desjardins, which vacated a § 101 rejection for claims that were directed to training a machine learning model on multiple tasks while preserving performance on prior tasks. In the decision, the Panel credited concrete, technical benefits, including reduced storage, lowered system complexity, and prevention of “catastrophic forgetting,” as providing the “something more” required under Alice Step 2 when an otherwise abstract idea is integrated into a practical application.

Why Desjardins Matters

By designating Desjardins as precedential, the USPTO has made clear that improvements in computational performance, learning behavior, storage, data sets, and data structures can qualify as patent-eligible technological advancements when properly claimed and supported in the specification.

In the memorandum, the Office cautions against overbroad § 101 rejections and reiterates that §§ 102, 103, and 112 (and not § 101) are the primary tools for defining claim scope and policing overbreadth, with § 101 serving only as a gatekeeper when applied correctly. Against that backdrop, the Office now reminds applicants that SMEDs can be used to place objective, contemporaneous evidence into the record where eligibility is not obvious on the face of the claims.

The memorandum does not change USPTO practice, but highlights an underused path to a stronger, fact-driven record for patent eligibility under § 101.

What Is a SMED?

A SMED is a Rule 132 evidentiary declaration directed to subject matter eligibility. It can establish facts as of the filing date, such as the state of the art, how a person of ordinary skill would have understood the disclosure and claims, or objective evidence that the claimed invention improves the underlying technology, so long as it does not introduce new matter or supply information that was required to be in the original disclosure. Anyone with knowledge of the relevant facts may sign, including an inventor, a co-worker, or an independent expert.

A SMED must satisfy Rule 132 formalities (including the 18 U.S.C. § 1001 language), be timely filed, and, as the Office urges, be submitted separately from declarations directed to §§ 102, 103, or 112. Most importantly, there must be a clear nexus between the evidence in the SMED and the claims. Bare legal conclusions in a SMED will carry no weight, and, instead, a SMED should include underlying facts, data, comparative testing, and reasoned explanations. SMEDs are entirely optional, and applicants cannot be penalized for electing not to file one.

How SMEDs Can Help Under Alice

The memorandum outlines several ways practitioners and inventors can utilize SMEDs to shape the eligibility analysis.

• Mental Processes: SMEDs can explain why claimed operations, such as distributed monitoring of network traffic across multiple machines with different analyses, cannot practically be performed in the human mind when read in light of the specification.

• Improvements to Technology: SMEDs can connect specific claim features and architectures to measurable performance gains or new capabilities in databases, neural networks, or animation systems, and identify where those improvements are reflected in the claims.

• Particular Treatment or Prophylaxis: SMEDs can show that analytical results are used to select and administer a specific medical treatment or regimen, integrating a judicial exception into a practical application.

• “Significantly More”: SMEDs can demonstrate that a particular, non-conventional arrangement of individually conventional elements yields the advantages described in the specification and amounts to an inventive concept.

How Examiners Must Treat SMEDs

Once a compliant SMED is of record, examiners must consider the facts and statements set forth therein on the merits and weigh this information with all other evidence under a preponderance-of-the-evidence standard.

If a § 101 rejection is maintained, the next Office action must explain the Office’s reasoning in light of the declaration. On the other hand, if the § 101 is withdrawn, the examiner must explain how the SMED and the overall record support eligibility. The memorandum underscores that eligibility is a fact-intensive inquiry, not a label-driven exercise.

Strategic Takeaways for Applicants

For artificial intelligence (AI), machine learning, data-centric, diagnostics, and other technology-heavy cases, the practical message is straightforward. An applicant should use the specification to develop a record that describes how the claimed invention changes the architecture, data structures, or processing in a way that improves the underlying technology, and include benchmarks or comparisons where feasible.

Where an examiner’s § 101 rejection ignores or downplays those contributions, or where the improvement is not self-evident on the face of the claims, a separate § 101-focused SMED from an inventor or technical expert can be a targeted way to explain the state of the art and tie the claim features to specific technical benefits defined in the specification.

Applicants should therefore prepare SMEDs to be tight and factual by focusing on the claim language, connecting any technical benefits from the supporting disclosure (think “nexus”), describing how a person of skill in the art would have understood the advantages at the time of filing, and summarizing any supporting data without introducing new matter.

Bottom Line

Taken together, Desjardins and the USPTO’s memorandum reaffirm that well-supported technological improvements remain patent-eligible under Alice when properly claimed and evaluated on a full evidentiary record. SMEDs do not change the law, but instead provide a practical, existing mechanism to clarify the § 101 record, reinforce the technical character of innovations, and better position important applications for allowance, appeal, and validity.