Eligibility Trilogy: Director Squires’ 20-Year Mission to Reopen the Patent Office Door
USPTO §101 Philosophy Takes Shape
Director John A. Squires’ introduction of an “Eligibility Trilogy” at the AIPLA Annual Meeting was not a spontaneous policy proposal. It represents the culmination of a doctrinal view he has held for nearly two decades: that 35 U.S.C. § 101 is a broad, inclusive “door” to patentability, and that the USPTO has, for years, improperly functioned as a gatekeeper using extra-statutory tests.
An examination of his recent public statements, combined with a 2006 law review article he co-authored, reveals a consistent philosophy. He believes the Alice/Mayo framework has been misapplied and that the real test for quality and patent-worthiness should occur under sections 102 and 103, not 101.
The Doctrinal Foundation: The 2006 Squires Article
Long before his nomination, Director Squires co-authored “PATENT LAW 101: DOES A GRUDGING LUNDGREN PANEL DECISION MEAN THAT THE USPTO IS FINALLY GETTING THE STATUTORY SUBJECT MATTER QUESTION RIGHT?” (p. 561).
This 2006 article, reportedly shared with the USPTO examining corps, lays bare the exact philosophy he is now implementing as Director.
His core 2006 argument was that the USPTO had erred by “grafting” a non-statutory “technological arts” requirement onto § 101 to reject business method patents (2006 Article, p. 562). He argued this was “nonsense” (p. 576) and “inconsistent with the plain meaning of § 101, and contrary to binding decisions of the United States Court of Appeals for the Federal Circuit” (p. 567).
In his view, the “focus of the PTO should be solely on the ‘quality’ of what goes out its door, and not on who or what can come in” (p. 563). He argued that the only test for § 101, as affirmed in State Street and AT&T v. Excel, should be whether the invention produces a “useful, concrete and tangible result” (p. 571).
This nearly two-decade-old article provides a clear lens through which to view his new “Eligibility Trilogy.”
The “Trilogy” as a Modern Framework
The Director’s three pillars—”Something Morse,” Enfish, and 35 U.S.C. § 100(b)—are a direct modernization of his 2006 thesis, designed to function within the post-Alice world.
1. Pillar One: “Something Morse“ as “Useful, Concrete, and Tangible”
The centerpiece of his new framework is “Something Morse.” This is a strategic reframing of the “something more” test from Alice/Mayo. In his AIPLA speech, he held up Samuel Morse’s Claim 5 (the dot-and-dash system) as eligible, in contrast to the ineligible Claim 8 (electromagnetism itself) (AIPLA, ¶ 39).
This is a direct echo of his 2006 article. The “useful, concrete and tangible result” test from State Street that he championed is precisely what Morse’s Claim 5 represents: a practical application of a natural law, not an abstract idea. He is anchoring his 101-policy in a 171-year-old Supreme Court precedent to argue that “something more” was never meant to be a complex philosophical test, but a simple, practical one.
Director Squires’ reliance on Morse Claim 5 as the bedrock of his framework is a strategic choice. While conventional wisdom cites Morse to invalidate broad claims (like Claim 8), scholarship from Professor Adam Mossoff argues this view is an “anachronism” (Mossoff, p. 737). Mossoff suggests Chief Justice Taney’s invalidation of Claim 8 was “judicial opportunism” (Mossoff, p. 768) that ignored the patent’s explicit disclaimers (Mossoff, p. 750) and the era’s “principle claiming” standard (Mossoff, p. 745).
This historical analysis supports Squires’ strategy: both are pushing back against using § 101 as a broad, policy-driven tool. Mossoff’s work validates Squires’ elevation of Claim 5 (the practical application) as the true, lasting lesson of the Morse case.
2. Pillar Two: Enfish and the “Technical Improvement” Framework
In his Senate testimony, Director Squires cited Enfish as a key decision, which held that software can be a “practical improvement in how computers function” (Senate Testimony, p. 3). For him, Enfish is the modern State Street—a case that correctly found a “useful result” in the digital realm.
His Appeals Review Panel decision in Ex parte Desjardins provides the clearest insight into this pillar. In that decision, Director Squires vacated a § 101 rejection for an AI invention, writing for the panel that the claims were “directed to an improvement to computer functionality versus being directed to an abstract idea” (Desjardins, p. 8, citing Enfish).
The Desjardins panel, led by Squires, determined that the invention solved the technical problem of “catastrophic forgetting” in machine learning models, allowing the model to “effectively learn new tasks in succession whilst protecting knowledge about previous tasks” (Desjardins, p. 9). This was not viewed as an abstract mathematical concept. Instead, it was framed as a tangible improvement to the operation of the machine learning model itself, which reduced storage capacity and system complexity (Desjardins, p. 9).
Significantly, the decision admonished the original Board panel for its “cursory analysis that ignored this well-settled precedent of Enfish“ (Desjardins, p. 10). The opinion concluded with a point that connects directly back to his 2006 article: “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” (Desjardins, p. 10).
3. Pillar Three: § 100(b) and a Return to the “Plain Text”
The third pillar, 35 U.S.C. § 100(b), is the statutory hook for the entire trilogy and the most direct expression of the Director’s career-long textualist philosophy. His 2006 article was a detailed argument for adhering to the “plain text” of the Patent Act. He argued that § 101’s “thirty-six simple, statutory words” (p. 561) were deliberately broad and that the PTO had erred by “grafting” extra-statutory tests (like “technological arts”) onto the law (p. 562).
Citing the Supreme Court in Diehr, his 2006 article stressed that “courts should not read into the patent laws limitations and conditions which the legislature has not expressed” (p. 568). For Squires, § 100(b)—which explicitly defines “process” to include “a new use of a known process, machine, [or] manufacture” (p. 570, fn. 45)—is one of those “expressed” conditions. It is not a judicial exception but a clear statutory instruction from Congress.
This pillar provides a clear, text-based path for eligibility, especially for AI and DL inventions. It allows an examiner to find an invention eligible even if it uses known hardware, known algorithms, or known cryptographic methods. By following the plain text of § 100(b), the focus of the inquiry shifts from the individual components (which may be old) to the eligibility of the new use to which they are applied. This textual foundation directly supports the practical application test of “Something Morse“ (a new use of electromagnetism) and the technical improvement framework of Enfish (a new use of a computer).
Analysis: Benefits, Challenges, and Risks
This Eligibility Trilogy could provide a clear, affirmative test for examiners. Instead of just looking for what is “abstract,” they are now instructed to look for what is “practical”—a “something Morse.” This is a clear green light for prosecuting patents in AI, DL, and diagnostics, which the Director signaled by signing patents in those exact fields on his first day (AIPLA, ¶ 43).
The primary challenge is retraining an entire examining corps. For over a decade, examiners have been trained to use Alice and Mayo as powerful tools for rejection. Shifting that institutional inertia to embrace a more permissive “trilogy” framework will require massive, consistent training to ensure it is applied evenly.
The Director’s framework, while clearer than the jurisprudence, creates a significant risk: a “USPTO-Federal Circuit gap.” The Federal Circuit is still bound by the two-step Alice/Mayo test. An invention that passes the “Something Morse“ test at the USPTO could still be deemed ineligible by a district court or the Federal Circuit.
This may lead to a new generation of patents that are “born strong” at the USPTO (AIPLA, ¶ 11) but prove brittle in litigation. Furthermore, as the agency champions AI-based inventions and AI-assisted search (AIPLA, ¶ 13), it must concurrently address practitioner concerns over the confidentiality of invention data used by these AI tools.
Takeaways for Practitioners
For patent prosecutors, the Director’s new guidance provides a clear playbook. While his “Something Morse“ / “practical application” test is not yet endorsed by the Federal Circuit or Congress, it signals a major shift in examination policy.
The safest and most effective “north star” for argumentation at the USPTO is now the Enfish framework, as applied in Desjardins. The winning formula appears to be:
Detail the Specific Technical Problem: Clearly articulate in the specification the technical challenge being solved (e.g., “catastrophic forgetting” in AI models, data processing inefficiencies, or specific computer operational hurdles).
Disclose the Specific Technical Solution: The specification must describe the tangible solution and how it improves the functioning of the computer or technical system itself, not just achieve a faster business result.
Claim the Connection: Draft claim limitations that explicitly tie the abstract concept (like an algorithm) to that tangible technological improvement, so the claim as a whole can be characterized as “directed to” the improvement, as was done in Desjardins (”...adjust...parameters...while protecting performance...on the first machine learning task”).
Looking Ahead
Director Squires is likely executing a deliberate, long-planned strategy to reopen the door of § 101. His “Eligibility Trilogy” is not an attempt to replace Alice/Mayo, but to create a practical, pro-patent pathway through it, anchored by his 20-year-old belief that § 101 should be a wide-open door.
For practitioners, this signals a significant shift in prosecution strategy. Arguments based on “practical application” and “technical improvement”—mirroring Morse and Enfish—are now explicitly aligned with the Director’s stated policy. Training appears to be TBD.
This optimism at the agency’s highest level, however, must be tempered with the cautious realization that—unless PERA passes soon—these patents will eventually be tested by courts that may not share the Director’s interpretation. A thinly stretched examiner might not even share the Director’s interpretation.
For applicants and practitioners, following Enfish and its progeny is still the best bet, but understanding the Director’s philosophy on §101 jurisprudence will be something to watch as further opinions, memos, and training programs are issued.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.