Ex Parte CHESKIS et alDownload PDFPatent Trial and Appeal BoardAug 24, 201814094773 (P.T.A.B. Aug. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/094,773 12/02/2013 41729 7590 08/28/2018 Pavel Pogodin, Esq. TransPacific Law Group 5245 AV ISLA VERDE APT 302 Carolina, PR 00979 FIRST NAMED INVENTOR OLGA ANDREEVNA CHESKIS UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 10052.1 2656 EXAMINER CROHN, MARK I ART UNIT PAPER NUMBER 2857 NOTIFICATION DATE DELIVERY MODE 08/28/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pavel@transpacificlaw.com ppogodin@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLGA ANDREEVNA CHESKIS, SEMEN LEONIDOVICH TREGUB, and ANDREY SERGEEVICH KAZAROV Appeal 2018-000648 Application 14/094, 773 1 Technology Center 2800 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE Appellant filed an appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). 2 1 Appellant is the Applicant, 000 ROCK FLOW DYNAMICS, which, according to the Appeal Brief, is the real party in interest. Appeal Brief (Appeal Br.) 2, filed June 9, 2017. 2 Our Decision additionally refers to the Specification (Spec.) filed December 2, 2013, the Final Office Action (Final Act.) notice emailed September 7, 2016, the Examiner's Answer (Ans.) dated August 25, 2017, and the Reply Brief (Reply Br.) dated October 25, 2017. Appeal 2018-000648 Application 14/094,773 We AFFIRM. The subject matter on appeal relates to computer-implemented methods, computerized systems, and non-transitory computer-readable mediums for determining a position of a coordinate of marker depth in wells for construction of a geological model of a mineral deposit (see, e.g., claims 1, 6, and 11 ). The Inventors state that an important step for constructing a geological model of a deposit (e.g., oil or other mineral deposit) is the tracing of boundaries of stratigraphic complexes or lithological features. Spec. ,r,r 8, 10. According to the Inventors, such boundaries have depth markers at wells at sites where well log curves show joint singularities. Id. ,r 10. The Inventors disclose methods that evaluate the coefficients of correlation for a set of well log records for pairs of wells and identify the marker depth at which the coefficients is maximal. Id. ,r 11. The Inventors state these methods improve the accuracy for evaluating parameters used to construct a geological model for the location of an oil or other mineral deposit, improve computation accuracy, and improve efficiency. Id. ,r,r 9, 11. Independent claim 1 is illustrative and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A computer-implemented method for determining a position of a coordinate of marker depth in well (W) for a construction of a geological model of a mineral deposit, the computer-implemented method being executed in a computerized system comprising one or more processors and a memory, the computer-implemented method comprising: 1) determining a reference group of wells; 2) determining wells (W) lying within a specified neighborhood of the reference group of wells where the neighborhood does not exceed the value of distance (R) from 2 Appeal 2018-000648 Application 14/094,773 any well of the reference group; 3) determining a correlation function C(z), and choosing for each well (W) identified at the previous stage a well from the reference group with the maximal correlation coefficient and an appropriate point Zmax in well (W); 4) testing the well (W), and, if the tests are successful, the choice of the well is approved and the depth Zmax corresponding to the maximal correlation is taken as the marker depth at well (W); 5) adding the well (W) thus found to the reference well group; and 6) reiterating all steps of the method until no well (W) is found at step 1) or steps 2) or 3). REJECTIONS ON APPEAL I. Claims 1-15 under 35 U.S.C. § 101 as being directed to non-statutory subject matter; and II. Claims 1, 6, and 11 are rejected3 on the ground of nonstatutory double patenting over claim 1 of U.S. Patent No. 9,874,086 B2 in view of Van Bemmel. 4 B. DISCUSSION Rejection I Claims 1-15 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 3 We note that U.S. Patent Application No. 14/094,779 issued as US 9,874,086 B2 on January 23, 2018. Therefore, the double patenting rejection is no longer provisional. Accordingly, we have corrected the Examiner's statement of this rejection to reflect this fact. 4 Van Bemmel et al., US 6,012,017 A, issued Jan. 4, 2000 ("Van Bemmel"). 3 Appeal 2018-000648 Application 14/094,773 The first step in analyzing whether a claim is directed to patent- eligible subject matter is determining whether the claim is directed to one of the patent-ineligible concepts: laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). If a claim is directed to a patent-ineligible concept, the second step in the analysis is to determine whether additional elements of the claim, "both individually and 'as an ordered combination,"' "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). Thus, "[a] claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [ abstract idea]."' Id. at 2357 (quoting Mayo, 132 S. Ct. at 1297). Here, the Examiner finds claim 1 is directed to the abstract idea of algorithms or mathematical relations. Final Act. 4. With regard to the second step of Alice, the Examiner finds the additional elements of claim 1, when considered separately and in combination, do not amount to significantly more than the abstract idea because the additional elements are recited with a high level of generality. Id. at 4--5. The Examiner makes similar findings for independent claims 6 and 11 and finds the dependent claims also do not include limitations that present significantly more than the abstract idea. Id. at 5---6. Appellant asserts the claims are distinguishable from those of Alice because the claims do not simply recite the implementation of a well-known mathematical formula of a business method on a general purpose computer but instead recite novel elements not disclosed in the prior art. Appeal Br. 4 Appeal 2018-000648 Application 14/094,773 10-11. Appellant further cites Ex parte Carvalho, 2016 WL 3646737 (PT AB 2016) to support their argument that the claims do not simply add general purpose computer components to a fundamental economic practice or mathematical equation. Reply Br. 2. Appellant's arguments are unpersuasive. Independent claims 1, 6, and 11 are directed to computer-implemented methods, systems, and non- transitory computer-readable media for determining a position of a coordinate of marker depth in a well for construction of a geological model of a mineral deposit. Claims 1, 6, and 11 each recite, 5 among other things, determining a reference group of wells, determining additional wells within a specified neighborhood of the reference group of wells, and determining a correlation function for a well of the reference group having the maximal correlation coefficient. As stated in paragraphs 12 and 31-36 of the Specification, Appellant's inventions use algorithms and mathematical relationships to calculate the depths of a marker of a group of wells and determine the well with the maximal correlation coefficient. Therefore, claim 1 is directed to the abstract idea of using algorithms or mathematical relationships to determine a position of a coordinate of marker depth in a well, which can be used to construct a geological model of a mineral deposit. The additional elements of claims 1, 6, and 11, both individually and as an ordered combination, do not transform the nature of claims 1, 6, and 11 into patent eligible subject matter. Indeed, claim 1 is directed to little more than the implementation of the abstract idea. Claim 6 is directed to a 5 Appellant does not argue the claims separately so we do not analyze the dependent claims separately from the independent claims. See 3 7 C.F .R. § 4I.37(c)(l)(iv). 5 Appeal 2018-000648 Application 14/094,773 computerized system that executes a similar method as claim 1, wherein the system includes one or a plurality of processors, an input/output module, and a computer-readable medium containing a program code. Claim 11 is directed to the implementation of a similar method as claim 1 via a non- transitory computer-readable medium. Paragraphs 15, 16, and 55---66 of the Specification, however, indicate that these components are generic components and not themselves improvements. Further, paragraph 30 of the Specification states that embodiments of the invention may be implemented as "software running on a general purpose computer, in the form of a specialized hardware, or combination of software and hardware." In view of the above, Appellant's contention that there is no difference between the claims and those in Thales Visionix Inc. v. US., 850 F.3d 1343 (Fed. Cir. 2017) (Appeal Br. 11-13) is unpersuasive. The claims of Thales were directed to an unconventional physical arrangement of inertial sensors and calculations based on a different reference frame to reduce errors. 850 F.3d at 1348-1349. Appellant does not explain that although their invention regards conventional or generic steps or components ( e.g., when considered individually), they are "combined in an unconventional manner" that provides an improvement and thus patent- eligible subject matter under step two of Alice. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256-59 (Fed. Cir. 2014) and BASCOM Glob. Internet Servs. Inc. v. AT & T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016)). In view of the above, claims 1, 6, and 11 embody the implementation of an abstract idea via a generic computer as a tool, as explained by the 6 Appeal 2018-000648 Application 14/094,773 Examiner. Ans. 7. Implementing an idea on a general purpose computer does not transform it into a patentable apparatus; the idea remains a pre- empted mental process. See Alice, 134 S. Ct. at 2354 ("We have described the concern that drives this exclusionary principle as one of pre-emption."), citing Bilski v. Kappas, 130 S. Ct. 3218, 3231 (2010) ("upholding the patent 'would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea"'). Claims 1, 6, and 11 involve the sort of matter the Supreme Court cautioned against in Alice by stating "transformation into a patent-eligible application requires 'more than simply stat[ing] the [abstract idea] while adding the words 'apply it."' Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294). As a result, Appellant's argument that the claims are patent-eligible under Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) because "the pending claims are directed to allowing a computer to perform a function not previously performable by a computer and, therefore, these claims are directed to the improvement to the computer technology" (Appeal Br. 7-10) is unpersuasive because the claims are the mere implementation of an abstract idea via a generic computer. For example, Appellant's Specification describes the invention as improving computational accuracy (i.e., improving the accuracy of the calculation), not improving the functioning of a computer. Spec. ,r 11. Further, though Appellant contends that the claims are "very specific and detailed [ and] recite a very elaborate method for determining position of a coordinate of marker depth in well" (Reply Br. 2), Appellant fails to demonstrate that the claims recite significantly more than the abstract idea of using algorithms or mathematical 7 Appeal 2018-000648 Application 14/094,773 relationships to determine a position of a coordinate of marker depth in a well, which can be used to construct a geological model of a mineral deposit. Appellant further argues that the claims "offer a particular solution to the particular problem of determining a position of a coordinate marker depth in well ( W) for a construction of a geological model of a mineral deposit." Appeal Br. 9 ( emphasis omitted). In this regard, Appellant refers to McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), as it was discussed in the November 2, 2016 Memorandum by Robert W. Bahr, USPTO Deputy Commissioner for Patent Examination Policy. In McRO, the Federal Circuit disagreed with a district court's determination that claims were "drawn to the [abstract] idea of automated rules-based use of morph targets and delta sets for lip-synchronized three- dimensional animation." Id. at 1313 (quoting Patentability Op., 55 F.Supp.3d 1214, 1226 (C.D. Cal. 2014)). Instead, the Federal Circuit determined that "the claims are limited to rules with specific characteristics." Id. More specifically, the Federal Circuit stated: [a]s the district court recognized during claim construction, "the claims themselves set out meaningful requirements for the first set of rules: they 'define[ ] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence."' Id. The Federal Circuit determined "[t]he specific, claimed features of these rules allow for the improvement realized by the invention." Id. Moreover, the Federal Circuit recently stated: "[ o ]ur recent abstract idea exception decisions likewise have stressed that a claimed invention must embody a concrete solution to a problem having 'the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving 8 Appeal 2018-000648 Application 14/094,773 it."' Interval Licensing LLC v. AOL, Inc., 2018 WL 3485608, 5 (Fed. Cir. 2018) (citing SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021-22 (Fed. Cir. 2018) (collecting cases)). A comparison of claims 1, 6, and 11 to claim 1 of McRO demonstrates substantial differences between the facts of this appeal and the facts of McRO. Claim 1 of McRO recites a method for automatically animating lip synchronization and facial expression of 3-D characters comprising, among other things, "obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence." Id. at 1307-1308. As noted above, the Federal Circuit determined "the claims are limited to rules with specific characteristics." Id. at 1313. In contrast, Appellant's claims 1, 6, and 11 do not recite any rules with specific characteristics. Although mathematical relationships and algorithms are implicated in the recitations of claims 1, 6, and 11, these claims do not actually recite any particular rules. 6 Claims 1, 6, and 11 generally recite determining a reference group of wells and whether a well lies within a neighborhood of the reference group based on an unspecified distance from any well of the reference group, determining an unspecified correlation function, performing unspecified tests on a well to approve a well choice for addition to the reference group, and repeating the steps until 6 The Examiner states "the claims present detail and 'a specific, particular way of achieving' a 'solution or particular outcome'" but clarifies that this detail is limited only to the abstract idea itself. Ans. 8. As discussed herein, the claims do not recite additional features, when considered individually and as an ordered combination, that transform the claimed subject matter into patent eligible subject matter. 9 Appeal 2018-000648 Application 14/094,773 no well is within the neighborhood of the reference group. Such a level of generality does not limit the claims to rules with specific characteristics, as inMcRO. Moreover, to the extent Appellant asserts the claims are distinguishable from the claims of other cases, such as Alice, due to a lack of applied prior art, we note that the mere fact an abstract idea is novel or non- obvious does not render the subject matter eligible under § 101. In response to an argument that a claim contained an inventive concept because it was not shown to be anticipated under§ 102 or obvious under§ 103, the Federal Circuit has stated: [t]hat position misstates the law. It is true that "the§ 101 patent- eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap." Mayo, 132 S. Ct. at 1304. But, a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty. Synopyis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). For these reasons and those set forth in the Examiner's Answer, we sustain the Examiner's § 101 rejection of claims 1-15. Re} ection II Claims 1, 6, and 11 are rejected on the ground of nonstatutory double patenting over claim 1 of U.S. Patent No. 9,874,086 B2 in view of Van B emme 1. The Examiner finds Appellant did not address the double patenting rejection in the Appeal Brief. Ans. 2. We agree with this finding. 10 Appeal 2018-000648 Application 14/094,773 Accordingly, we summarily affirm the Examiner's double patenting rejection of claims 1, 6, and 11. C. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 11 Copy with citationCopy as parenthetical citation