Ex parte Fautz

Informative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, when claims recite mathematical formulas (a judicial exception) but the additional elements, such as the MR coils' physical reception-sensitivity profiles and the resulting reconstructed image, reflect an improvement to a technology, the exception is integrated into a practical application under Step 2A, Prong Two. The claims are then not "directed to" an abstract idea, and the Board need not reach Step 2B (inventive concept). No prior precedent directly addressed this issue in the decision text; the Board applies the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance and its Step 2A, Prong One and Prong Two framework to claims reciting math. For the examiner, a rejection that merely labels claims as math or as collecting, analyzing and displaying information, and calls the apparatus conventional, will not hold if the claim reflects a technological improvement. The Board rejected the Examiner's view that the data collection was a field of use or token addition. For the applicant, tying the equations to the physical properties of the hardware and showing, from the specification, a technical problem solved and an improved output can carry the appeal at Prong Two without any inventive-concept showing. The Board relied on Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), and distinguished Parker v. Flook, 437 U.S. 584 (1978), as discussed in Bilski v. Kappos, 561 U.S. 593 (2010). LEGAL TEST OR STANDARD: Under the 2019 Guidance, Step 1 asks whether the claim falls within the four statutory categories. Step 2A, Prong One asks whether the claim recites a judicial exception, including mathematical concepts, certain methods of organizing human activity, or mental processes. Prong Two asks whether the recited exception is integrated into a practical application, for example by reflecting an improvement to technology or a technical field, as opposed to adding insignificant extra-solution activity or generally linking the exception to a technological environment. Only if the claim is directed to the exception does Step 2B ask whether it adds a specific limitation beyond well-understood, routine, conventional activity. TRIGGERING FACTS: Independent claims 1, 8 and 9 (method, apparatus, medium) recited three mathematical formulas and four calculations: individual coil reception sensitivity profiles, Fourier-transformed signals, complexly corrected signals, and a sum signal. They also recited scanning a subject with an MR tomography apparatus and reconstructing image data from the sum signal. The specification described a technical problem of improving sensitivity correction with surface coils and said the claimed approach avoids the prescan-normalize method's reliance on a volume coil and the adaptive-combine method's sub-optimal SNR. The Examiner had rejected under 35 U.S.C. § 101, finding an abstract idea and conventional additional elements. KEY QUOTE: "Because we find the claims are not directed to an abstract idea, we need not proceed to determine whether the claims provide an inventive concept." (p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), and distinguished Parker v. Flook, 437 U.S. 584 (1978), as discussed in Bilski v. Kappos, 561 U.S. 593 (2010). PRACTICE TIP: In an appeal brief against a § 101 rejection of claims reciting equations, cite the specification's identification of a technical problem and its solution. Show how the equations depend on the physical properties or arrangement of the claimed hardware, and how the claim improves the output. Argue Step 2A, Prong Two integration under the 2019 Guidance, in the manner of Thales, rather than relying on Step 2B alone.