Ex Parte CHESKIS et al

Patent Trials and Appeals Board

Aug 24, 2018

14094773 - (D) (P.T.A.B. Aug. 24, 2018)

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
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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").
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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.
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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).
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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
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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
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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
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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.
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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.
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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
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