Ex Parte Mori

Board of Patent Appeals and Interferences

Mar 10, 2011

10141033 (B.P.A.I. Mar. 10, 2011)

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.
10/141,033 05/07/2002 Shuji Mori H042.1.2 8688
27734 7590 03/10/2011
PHILIP J. POLLICK
183 Irving Way W
COLUMBUS, OH 43214-3618
EXAMINER
LOBO, IAN J
ART UNIT PAPER NUMBER
3662
MAIL DATE DELIVERY MODE
03/10/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHUJI MORI
____________

Appeal 2009-009247
Application 10/141,033
Technology Center 3600
____________

Before, MICHAEL W. O’NEILL, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009247
Application 10/141,033

STATEMENT OF THE CASE
Shuji Mori (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-26 under 35 U.S.C. § 101
because the claimed invention is not supported by a credible asserted utility
or a well-established utility and under 35 U.S.C. §112, first paragraph, as
failing to comply with the enablement requirement. We have jurisdiction
over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a method for determining the probable
location of subterranean oil and gas deposits. Appellant’s invention relies
on a statistical correlation of historical severe weather events, such as
tornadoes, and the presence of known petroleum and natural gas reserves
within limited areas of the United States, e.g., Central Texas (area between
Austin and Dallas/Ft. Worth), Central Colorado (Denver area), Western
Pennsylvania, northern Texas, Louisiana (Gulf Coast Area and Mississippi
Delta area), and Eastern Kansas. Spec. 1, ll. 8-12; Spec. 11-13; Spec. 17, ll.
14-20; and figs. 13-16.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A method for determining the probable location of underground
petroleum comprising the steps of:
a) monitoring weather phenomena in an area designated for
petroleum exploration;
b) detecting a severe-weather phenomenon;
c) locating the severe-weather inducing site associated with said
severe-weather phenomenon; and
d) using said severe-weather inducing site as a site for further
petroleum exploration.
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SUMMARY OF DECISION
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

ANALYSIS
The lack of utility rejection
The Examiner has the initial burden of setting forth a reason to doubt
Appellant’s presumptively correct assertion of utility. In re Swartz, 232
F.3d 862, 864 (Fed. Cir. 2000). “The PTO may establish a reason to doubt
an invention's asserted utility when the written description ‘suggest[s] an
inherently unbelievable undertaking or involve[s] implausible scientific
principles.’” In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting
In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)) (alterations in original).
The burden of coming forward with evidence of utility shifts to Appellant
“[i]f the [Examiner] provides evidence showing that one of ordinary skill in
the art would reasonably doubt the asserted utility[.]” Id.
At the outset, we appreciate that Appellant’s invention does not
propose to discover petroleum deposits at the claimed “severe-weather
inducing site” (as per claim 1) or the “area of high severe-weather source
density” (as per claim 24), but merely proposes to use the location of the
“severe-weather inducing site” or the “area of high severe-weather source
density” for determining a probable location of underground petroleum.
Nonetheless, we agree with the Examiner that although Appellant’s evidence
shows a statistical correlation between the location of known tornado
occurrences and the location of known petroleum deposit sites, the statistical
correlation does not provide a nexus for applying this correlation for
“determining the probable location of underground petroleum.” Ans. 7.
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We acknowledge that Appellant’s Specification is replete with
evidence about the co-location of known tornado occurrences and of known
petroleum deposits. See App. Br. 9-13. However, Appellant has not
provided any concrete evidence to show that the location of a severe weather
site can be used for the later determination of the presence of petroleum at a
probable site. Like the Examiner, we find the Declaration of Mr. Philip
Taylor (filed Feb. 22, 2005) unpersuasive because it does not provide any
factual evidence as to whether the observed “aromatic fumes” and “oily
film” result from a petroleum deposit or merely constitute leakage from a
nearby hydrocarbon source from the Put-in-Bay airport or marina2. See Ans.
8. The mere fact that areas of known severe weather sites and areas of
known petroleum deposits are localized relative to each other, does not
necessarily mean that the location of a tornado or other severe weather
occurrence will necessarily lead one of ordinary skill to determine “the
probable location of underground petroleum,” as called for by claims 1 and
24.
As noted above, the evidence supplied by Appellant shows a
statistical correlation between locations of known severe weather sites and
locations of known petroleum deposits, but does not provide any evidence of
causality, that is, a nexus between the location of a severe weather site and
the presence of petroleum at a probable site. We find that the existence of a
statistical correlation or association between the location of tornadoes and
the location of petroleum deposits does not automatically mean that one
results from the other.

2 Put-In-Bay, Ohio is an island in Lake Erie.
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For example, a correlation exists between peoples’ height and weight;
taller people tend to be heavier than shorter people. However, people of the
same height vary in weight, and two people can exist where the shorter one
is heavier than the taller one. Nonetheless, the average weight of people 5'5''
is less than the average weight of people 5'6'', and their average weight is
less than that of people 5'7'', etc. Correlation can only tell just how much of
the variation in peoples’ weights is related to their heights, but cannot
predict the probable weight of a person having a known height. Similarly, in
this case, we find that Appellant’s correlation between the location of known
tornado occurrences and the location of known petroleum sites can only tell
just how much variation in the location of tornado occurrences is related to
locations of petroleum deposits, but cannot predict the probable location of a
later determined petroleum deposit. At most, Appellant’s correlation can be
a hint that requires further investigation and research.
The Supreme Court has provided guidance on processes which have
not been developed.
Whatever weight is attached to the value of
encouraging disclosure and of inhibiting secrecy,
we believe a more compelling consideration is that
a process patent in the chemical field, which has
not been developed and pointed to the degree of
specific utility, creates a monopoly of knowledge
which should be granted only if clearly
commanded by the statute. Until the process claim
has been reduced to production of a product shown
to be useful, the metes and bounds of that
monopoly are not capable of precise delineation. It
may engross a vast, unknown, and perhaps
unknowable area. Such a patent may confer power
to block off whole areas of scientific development,
without compensating benefit to the public. The
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basic quid pro quo contemplated by the
Constitution and the Congress for granting a patent
monopoly is the benefit derived by the public from
an invention with substantial utility. Unless and
until a process is refined and developed to this
point-where specific benefit exists in currently
available form-there is insufficient justification for
permitting an applicant to engross what may prove
to be a broad field.

Brenner, Comr. Pats. v. Manson, 383 U.S. 519, 523 (1966).
Additionally, MPEP § 2106 sets forth the basic guidelines for analysis
of computer related inventions, but the analysis is similarly applicable to all
inventions whether computer implemented or not.
We must first determine what the Appellant has invented and is
seeking to patent. The Specification states that “[t]he present invention
relates to a method for determining the probable location of subterranean oil
and gas deposits … using severe weather phenomena such as tornados and
associated phenomena to identify the location of subterranean petroleum
deposits.” Spec. 1, ll. 8-12. The Specification further states that to “locate
the petroleum deposit, the origin or inducing site of the severe weather is
determined using known techniques in the meteorological arts.” Spec. 5, ll.
3-5. Further, Appellant’s Specification states that using conventional
statistical analysis, “it has been determined that such severe weather
occurrences are a very strong predictor of subterranean petroleum
occurrences.” Spec. 6, ll. 23-25. Finally, the Specification states that,
“[h]aving determined the severe-weather inducing site as a site for further
petroleum exploration, the presence of petroleum is determined typically by
drilling a well at the site.” Spec. 7, ll. 16-18. Hence, like the Examiner, we
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find that Appellant has discovered a statistical correlation between known
locations of severe-weather sites and known locations of petroleum deposits
(see Figure 1 of Appellant’s drawings) and based on this correlation
proposes that for a known severe weather site the probable location of
unknown petroleum deposits can be determined. See Ans. 6. However,
Appellant has not presented any evidence to show that the location of a
severe-weather inducing site has ever been used or even attempted to be
used to determine the probable location of underground petroleum.
Furthermore, as explained above, Appellant’s correlation between the
location of known tornado occurrences and the location of known petroleum
sites cannot predict the probable location of a later determined petroleum
deposit unless a causal relationship, that is, a nexus is shown to exist.
Therefore, we agree with the Examiner that there is reasonable doubt with
respect to the operability and practical utility of the claimed invention and
that Appellant has not presented any evidence to show the invention as
claimed has practical utility. Ans. 5.
Although we appreciate Appellant’s position that tornadoes are not
random events (see App. Br. 13-14), nonetheless, in addition to the presence
of petroleum deposits other factors may influence the development of
tornadoes and other severe weather phenomena, such as, atmospheric
temperature and humidity, wind speed and pattern, the time of year and the
time of day, etc. Merely showing that certain petroleum-rich areas
experience a statistically higher number of tornadoes than certain petroleum-
lean areas (see App. Br. 12), does not in itself reveal a causal relationship,
that is, a nexus between the location of tornadoes and the probable location
of petroleum deposits. If such a relationship existed, one of ordinary skill in
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Application 10/141,033

the art would have readily expected that once the petroleum was depleted
from a petroleum-rich area, the incidence of tornadoes would most likely
decrease to a level comparable to the incidence shown by Appellant to be in
the petroleum-lean areas. Appellant has not provided any evidence to show
such a pattern of behavior.
While we consider Appellant’s position that statistical back-testing is
an appropriate tool for petroleum prospecting (see App. Br. 9-12), we note
that in the prior art alluded by Appellant, statistical back-testing was used
merely as a back-up tool to verify an established technique for discovering
petroleum reserves. For example, in Sundberg (U.S. Patent No. 4,678,911,
issued Jul. 7, 1987), in addition to statistical back-testing, changes in spectral
data obtained from the earth’s surface were measured to detect areas where
hydrocarbon seepage from buried oil or gas reservoirs occurs. Sundberg, col.
1, ll. 6-13.
Furthermore, Appellant’s Specification states that in addition to
statistical back-testing, a wide-variety of geophysical and geochemical
techniques are routinely used in petroleum exploration, i.e., elemental and
hydrocarbon analysis, radiometrics, seismic reflection and refraction,
magnetic anomalies. See Spec. 7, ll. 19-21. See also App. Br. 16-17.
However, Appellant has not even provided at least a mere soil sample or any
other measurements using any of the known geophysical and geochemical
techniques (see Spec. 7, ll. 19-21) to show that the location of a severe-
weather inducing site can be used to determine the probable location of an
unknown petroleum deposit.
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Lastly, the arguments presented in the Declaration under 37 C.F.R.
§ 1.132 of Dr. Shuji Mori3 (hereafter “Mori Declaration”), filed Jul. 31,
2007, essentially mirror the arguments presented in the Appeal and the
Reply Brief and have been discussed supra. Hence, for the reasons set forth
above, we find the Mori Declaration unpersuasive.
In conclusion, for the foregoing reasons, we find that the Examiner
has set forth a prima facie case of lack of practical utility that has not been
effectively rebutted by Appellant. Accordingly, we will sustain the rejection
of claims 1-26 under 35 U.S.C. §101.

The Enablement Rejection
“The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosure in the patent coupled
with information known in the art without undue experimentation.” United
States vs. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
Insofar as the enablement requirement is concerned, the dispositive
issue is whether the Appellant’s disclosure, considering the level of ordinary
skill in the art as of the date of the Appellant’s application, would have
enabled a person of such skill to make and use the applicant’s invention
without undue experimentation. See In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982). In calling into question the enablement of the Appellant’s
disclosure, the Examiner has the initial burden of advancing acceptable
reasoning inconsistent with enablement so as to shift the burden to the
Appellant to show that one of ordinary skill in the art could have practiced
the claimed invention without undue experimentation. See id.

3 Dr. Shuji Mori is the sole inventor in the instant application.
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Determining whether any necessary experimentation is undue involves
consideration of many relevant factors including, but not limited to: (1) the
breadth of the claims; (2) the nature of the invention; (3) the state of the
prior art; (4) the level of one of ordinary skill; (5) the level of predictability
in the art (6) the amount of direction provided by the inventor; (7) the
existence of working examples; and (8) the quantity of experimentation
needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In this case, the nature of the invention is based on a statistical
correlation between known locations of severe-weather sites and known
locations of petroleum deposits. However, as discussed above, Appellant’s
correlation cannot predict the probable location of an unknown petroleum
deposit. Further, we note that because Appellant’s Specification states that
the success rate of geophysical methods is 1 in 8 (about 12.5%) and that of
geochemical methods is 1 in 3 (about 33.3%), we find that the level of
unpredictability in the petroleum prospecting art is high. See Spec. 3, ll. 1-3.
Also, as discussed above, Appellant has not presented any evidence to show
that the location of a severe-weather inducing site has ever been used or
even attempted to be used to determine the probable location of underground
petroleum. Furthermore, although Appellant’s data includes more than 1450
actual physical sites of observed weather sightings (see App. Br. 45),
Appellant’s disclosure does not set forth any guidelines that would allow a
person of ordinary skill in the art to determine which weather phenomena
constitutes a “severe weather phenomena.” For example, the strength of a
tornado can be rated, based on the Fujita scale, from F0, the weakest
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Application 10/141,033

category, to F5, the strongest category.4 However, Appellant’s disclosure
does not provide any guidance to determine whether all tornadoes, from F0
to F5 constitute a “severe weather phenomena” or, for example, merely
those at and above a F3 rating. Hence, Appellant’s disclosure does not
provide any guidance for a person of ordinary skill in the art to determine
what constitutes a “severe weather phenomena” in order to locate the
“severe-weather inducing site,” as per claim 1, or the “area of high severe-
weather source density,” as per claim 24, so as to then determine the
“probable location of underground petroleum.” Hence, in view of the above
factors, we find that a person of ordinary skill in the art would be required to
perform an undue amount of experimentation in order to use Appellant’s
claimed invention.
Accordingly, for the foregoing reasons, the rejection of claims 1-26
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement is likewise sustained.
Since our analysis is different from that of the Examiner (see Ans. 5),
we denominate this as a new ground of rejection.

SUMMARY
The decision of the Examiner to reject claims 1-26 under 35 U.S.C.
§ 101 because the claimed invention is not supported by a credible asserted
utility or a well-established utility is affirmed.
The decision of the Examiner to reject claims 1-26 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement
is affirmed. We denominate this rejection as a new ground of rejection.

4 http://www.fema.gov/kids/fscale.htm
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Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides "Appellants may
file a single request for rehearing within two months from the date of the
original decision of the Board."
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that, TO AVOID TERMINATION
OF THE APPEAL AS TO THE REJECTED CLAIMS, Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

JRG

PHILIP J. POLLICK
183 Irving Way W
COLUMBUS, OH 43214-3618
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