Ex parte Olson

Informative decision only: persuasive authority, not binding precedent. Applying the USPTO's January 7, 2019 2019 Revised Patent Subject Matter Eligibility Guidance, when a claim recites a mathematical concept (Step 2A, Prong 1) but the additional elements apply that mathematics to improve a particular technology and use a particular machine, the Board treats the claim as integrated into a practical application (Step 2A, Prong 2) and holds that the claim is not "directed to" a judicial exception, so the Examiner's § 101 rejection cannot stand. The Board did not reach the well-understood, routine, conventional inquiry. No prior precedent directly addressed this issue in the text; the decision is listed as applying the 2019 revised guidance and shows the Board moving from the Examiner's Alice two-step framing to the Memorandum's Step 2A Prong 1 and Prong 2 analysis. For the Examiner, a rejection that labels claims abstract and treats the devices as generic and conventional is not enough where the claim recites a particular machine and applies the math to improve registration accuracy; the Board reversed. For applicants, claims that tie a mathematical algorithm to a specific device and a specified technical improvement, supported by the specification's description of the problem and the prior-art shortcoming, can be reversed at Step 2A Prong 2 without any showing of an inventive concept. The Board relied on Diamond v. Diehr, 450 U.S. 175 (1981), Thales Visionix Inc. v. United States, 850 F.3d 1343 (2017), and SiRF Tech., Inc. v. Int'l Trade Com'n, 601 F.3d 1319 (2010), alongside MPEP § 2106.05. LEGAL TEST OR STANDARD: Under the Memorandum, the Board looks to whether the claim recites (1) any judicial exceptions, including certain groupings of abstract ideas (i.e. mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim recites a judicial exception and does not integrate it into a practical application does the Board look to whether the claim (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, conventional in the field, or (4) simply appends well-understood, routine, conventional activities specified at a high level of generality. TRIGGERING FACTS: Claim 7, a method of registering a catheter navigation system to a three-dimensional image of a heart, recited fiducial pairs, a mapping function with an error function of about zero, and a thin plate splines algorithm summing weighted basis functions, which the Board found to be a mathematical concept. It also recited placing a tool on a heart surface location, measuring position by the catheter navigation system, and identifying the corresponding image location. The specification explained that the claimed transformation compensates for non-linearities and inhomogeneities in the navigation system and avoids errors from prior-art affine transformations. The Board found the system was a particular machine, because the position information could exist only with respect to a particular catheter navigation system. KEY QUOTE: "Accordingly, we conclude the claimed invention is integrated into a practical application, and under the guidance provided in the Memorandum, the claims have not been shown to be patent-ineligible because they are not “directed to” a judicial exception." (slip op. at 13) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board followed Diamond v. Diehr, 450 U.S. 175 (1981), Thales Visionix Inc. v. United States, 850 F.3d 1343 (2017), and SiRF Tech., Inc. v. Int'l Trade Com'n, 601 F.3d 1319 (2010), and applied the USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance. PRACTICE TIP: In a § 101 appeal brief, cite the specification to show how the claimed mathematics improves a particular technology, such as reducing errors from system inhomogeneities. Argue that the claim recites a particular machine that is integral to it, and frame the argument under Step 2A Prong 2 of the Memorandum, citing MPEP § 2106.05(a), (b), and (e), rather than relying only on Alice step 2.