Ex Parte Herrmann et al

Patent Trial and Appeal Board

Nov 16, 2017

13398021 (P.T.A.B. Nov. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/398,021 02/16/2012 Philippe HERRMANN 0336-029-2/100151 1046
11171 7590 11/20/2017
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404
EXAMINER
MURPHY, DANIEL L
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
11/20/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE HERRMANN and PIERRE HUGONNET
Appeal 2016-0037701
Application 13/3 98,0212
Technology Center 3600
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 from the rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Br.,” filed June 30, 2015), the
Examiner’s Answer (“Ans.,” mailed Nov. 9, 2015), and the Final Office
Action (“Final Act.,” mailed Feb. 13, 2015).
2 According to Appellants, the real party in interest is “CGGVERITAS
SERVICES SA.” Br. 2.
Appeal 2016-003770
Application 13/398,021
BACKGROUND
According to the Specification, “[ejmbodiments of the subject matter
disclosed herein generally relate to methods and systems and, more
particularly, to mechanisms and techniques for 3-dimensional (3D)
processing seismic data to separate up-going and down-going wave fields
recorded by multi-component receivers underwater.” Spec. 12.
CLAIMS
Claims 1,11, and 20 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A method for de-pegging seismic data related to a
subsurface of a body of water, the method comprising:
receiving as input recorded seismic data (H, G), wherein
the recorded seismic data (H, G) is recorded with a receiver
having at least three components;
extracting a three-dimensional (3D) gather from the
recorded seismic data (H, G);
separating up-going and down-going components (U, D)
from the 3D gather using a 3D calibration operator (Gcai);
estimating values (F0) of a 3D predictive deconvolution
operator (F) and values (fo) of a filter function (f) based on a
function that includes the up-going and down-going components
(U, D), the 3D predictive deconvolution operator (F) and the
filter function (f); and
calculating de-pegged seismic data (P) based on the up-
going and down-going components (U, D), the values (F0) of the
3D predictive deconvolution operator (F), and the values (fo) of
the filter function (f),
wherein the de-pegged seismic data (P) is calculated with
no radon transform.
Br. 20.
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Application 13/398,021
REJECTION
The Examiner rejects claims 1—20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
DISCUSSION
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo [Collaborative Servs. v. Prometheus Labs. Inc.], 132
S. Ct. [1289,] 1293 [(2012)] (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to” inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the focus of
the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (citing Elec.
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Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016);
Enfish, 822 F.3d at 1335.
In rejecting claim 1, the Examiner finds that the claim is directed to
the abstract idea of a mathematical formula. Final Act. 5. As discussed
below, we are not persuaded of reversible error in this finding by
Appellants’ arguments.
First, Appellants argue that the claims “are directed to statutory
subject matter because they are directed to a method or apparatus.” Br. 8.
Although the claims may be directed to a method or an apparatus, the
inquiry into whether they recite patent eligible subject matter does not end
there. Rather, once it has been determined that the claims fall into one of the
statutory categories, e.g., a method or apparatus, as the Examiner indicates,
the two-step Alice analysis is then applied to determine if the claims are
nonetheless direct to ineligible subject matter. See Final Act. 6.
Second, Appellants argue that the Examiner has erroneously stated
that the claims are non-statutory because of the mathematical formula
recited in dependent claim 4. Br. 8. Appellants assert that a dependent
claim reciting a formula cannot transform its independent claim into an
ineligible claim. Id. Although Appellants’ statement may be true, the
Examiner only points to claim 4 by way of example. The rejection does not
rely on the finding that claim 4 is ineligible in determining that claim 1 is
directed to ineligible subject matter. See Final Act. 5—6.
Third, Appellants argue that the claims are not directed to an abstract
idea. Regarding whether the claims are directed to a mathematical formula
or relationship, Appellants assert that the independent claims do not recite a
formula as contemplated in Parker or Benson. Br. 11 (citing Parker v.
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Flook, 437 U.S. 584, 59A-95 (1978); Gottschalkv. Benson, 409 U.S. 63, 67
(1972)). Appellants also assert:
Further, the Interim Guidance states in Section I.A.l that
the examiner need[s] first to determine what the claim is
“directed to.”
In this respect, note that Claim 11, as a whole, is directed
to a process for de-pegging seismic data, which is similar to
removing noise. The process uses measured seismic data and
various mathematical operators to achieve this end result such
that a better image of the surveyed surface is obtained. Thus, the
claim is not directed to mathematical formulas or mathematical
relationships, but rather to a process of noise removing.
It is respectfully submitted that none of the independent
claims recites a mathematical formula or try to protect “a
formula.”
Br. 12. We are not persuaded. We find that Appellants’ statements do not
amount to a meaningful explanation as to why the claimed invention is not a
mathematical relationship as found by the Examiner. And we agree with the
Examiner’s characterization of the claims. Even if the independent claims
do not recite a specific formula, we find that the claims are nonetheless
directed to a mathematical relationship. The steps of the claims involve
receiving input data, extracting certain information from the data, separating
data components, applying an unspecified function to the data components,
and then calculating a result based on another unspecified function. We find
these steps similar to the steps that the Federal Circuit determined were
patent ineligible in Electric Power. In Electric Power, the claims at issue
were directed to performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results. Electric Power, 830 F.3d at 1351—52. The
Federal Circuit held that the claims were directed to an abstract idea,
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explaining that “[t]he advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions.” Id. at 1354. And, the Federal Circuit noted, “we have treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Id.
Accordingly, we find that claim 1 is directed to a mathematical
relationship, which is an abstract idea under step one of the Alice analysis.
Step two of the Alice framework is “a search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in
original) (citing Mayo, 132 S. Ct. at 1294).
With respect to step two, the Examiner finds:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
element(s) do not provide meaningful limitation(s) to transform
the abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amounts to significantly more than the
abstract idea itself.
Ans. 3^4. We agree with and adopt the Examiner’s findings, and as
discussed below, we are not persuaded by Appellants’ arguments.
Here, Appellants first argue that the claims include significantly more
than the judicial exception and that the claims improve an existing
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technological process. Br. 13—16. In particular, Appellants assert that the
claims should be found to include patent-eligible subject matter based on
their similarity to the claims in Research Corp. Technologies, Inc. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). Id. at 13—14. More
specifically, Appellants contend that, like the claims in Research Corp., the
claimed invention improves an image of a surveyed subsurface and recites a
series of acts, e.g., extracting, separating, and estimating, for generating the
de-pegged seismic data. Id. Appellants also assert “the features of [the
claims] mirror the claim in Diehr by using a function in a novel way to
calculate de-pegged seismic data (P), to ultimately calculate a better image
of the subsurface, which improve an existing technological process of
locating and extracting oil.” Id. at 16 (citing Diamond v. Diehr, 450 U.S.
175 (1981)).
We are not persuaded. Rather, we find that when the claims are
considered as a whole they do not amount to more than the mathematical
relationship discussed above. In Diehr, the claims were found eligible
because, when taken as a whole, the claims were directed to more than a
mathematical formula and included meaningful limitations separate from the
formula that employ the mathematical formula to improve a process related
to rubber curing. See Diehr, 450 U.S. at 175—76. Similarly, in Research
Corp., the claims were found eligible because they provided a specific
tangible result, i.e. generating a halftone image rather than the mere
application of a mathematical formula. Research Corp., 627 F.3d at 868—69.
In contrast, present claim 1 is directed only to the application of certain
mathematical relationships to given data, and, significantly, Appellants have
not pointed to any element in the claim in which the data is used to create a
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more accurate subsurface image. Thus, we find the claims here more akin to
those addressed in Parker v. Flook, in which the claims were directed to
taking measurements and applying an algorithm to set alarm limits.
Finally, Appellants argue that the claims are not ineligible because
they do not claim building blocks of human ingenuity. Br. 16—17. We
understand this to be a preemption argument, and we are not persuaded.
Although the Supreme Court has described “the concern that drives this
exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” Alice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Yet although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id. Thus, we consider that any
concerns related to pre-emption have been addressed as part of the
Examiner’s Alice analysis, with which we agree.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 1. Accordingly, we sustain the rejection of
claim 1, and we also sustain the rejection of claims 2—20, which fall with
claim 1.
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CONCLUSION
We AFFIRM the rejection of claims 1—20 for the reasons set forth
herein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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