Ex Parte Young

Patent Trial and Appeal Board

Feb 8, 2018

13367617 (P.T.A.B. Feb. 8, 2018)

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.
ESEIS-003 3006
EXAMINER
LE, SARAH
ART UNIT PAPER NUMBER
2619
MAIL DATE DELIVERY MODE
13/367,617 02/07/2012
26604 7590
KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106
ROGER YOUNG
02/08/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER YOUNG1
Appeal 2016-000593
Application 13/367,617
Technology Center 2600
Before ROBERT E. NAPPI, JEAN R. HOMERE, and
DEBRA K. STEPHENS, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3 through 11, and 13 through 18.
App. Br. 4. Claims 2 and 12 have been canceled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is eSeis Inc. App. Br. 2.
Appeal 2016-000593
Application 13/367,617
INVENTION
Appellant’s disclosed and claimed invention is directed to a method of
seismic analysis to produce a display by extracting one or more horizons,
where each of the horizons is defined by a plurality of data points. Abstract.
Claim 1 is representative of the invention and reproduced below.
1. A method for producing a display, comprising:
utilizing seismic data stored on a computer storage
medium wherein said seismic data is produced by generating
sound waves that are directed to and then reflected by subsurface
features whereupon a return signal of said sound waves is
measured for use in producing said seismic data comprising
horizons of relatively constant geologic time;
extracting at least one horizon from said seismic data, said
at least one horizon being defined by a plurality of data points;
selecting a plurality of computation points on said at least
one horizon wherein said plurality of data points comprise a first
group of data points and a second group of said data points for
each of said computation points wherein said first group of data
points is on an opposite side from said second group of data
points for each of said plurality of computation points;
combining information in said plurality of data points for
each of said computation points on said at least one horizon to
produce a plurality of combination points;
combining said combination points to provide at least one
combination point mapping; and
producing a visual display related to at least one of content
or structures of geological formations with said at least one
combination point mapping.
2
Appeal 2016-000593
Application 13/367,617
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1, 3 through 11, and 13 through 18
under 35 U.S.C. § 101 for being directed to non-statutory subject matter.
Final Action 3—5.
The Examiner has rejected claims 1,3,6 through 11, and 13 through
18 under 35 U.S.C. § 103(a) for being unpatentable over Lomask (US
2009/0204332 Al; Aug. 13, 2009) and Huang and Tai, The Pre-Processing
of Data Points for Curve Fitting in Reverse Engineering Int’l. J. Adv.
Manuf. Technol. 16.9, 635—643 (2000). Final Action 5—20.
The Examiner has rejected claims 4 and 5 under 35 U.S.C. § 103(a)
for being unpatentable over Lomask, Huang, and Bhattacharjya (US
5,809,213; Sept. 15, 1998). Final Action 20-22.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s determination that the claims are unpatentable.
Rejection under 35 U.S.C. $ 101
The Supreme Court reiterated the framework set out in Mayo
Collaborative Services, v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012),
for “distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S.Ct. 2347, 2355 (2014). Assuming that a claim nominally
2 Throughout this Decision we refer to the Appeal Brief filed April 29, 2015,
Reply Brief filed September 17, 2015, Final Office Action mailed October 7,
2014, and the Examiner’s Answer mailed August 20, 2015.
3
Appeal 2016-000593
Application 13/367,617
falls within one of the statutory categories of machine, manufacture, process,
or composition of matter, the first step in the analysis is to determine if the
claim is directed to a law of nature, a natural phenomenon, or an abstract
idea (judicial exceptions). If so, the second step is to determine whether any
element or combination of elements in the claim is sufficient to transform
the nature of the claim into a patent eligible application, that is, to ensure
that the claim amounts to significantly more than the judicial exception.
With respect to the Alice analysis, Appellant argues the Examiner
erroneously determined that independent claim 1 is directed to an abstract
idea. Rather, Appellant argues that the claim is directed to a long known
issue with horizon generator programs used in the discovery and study of
underground formations of hydrocarbons. App. Br. 17—18. Appellant
analogizes the claims to those found patent eligible by the Court in Diamond
v. Diehr, 450 U.S. 175 (1981). Appellant additionally argues that seismic
data is produced by generating sound waves that are reflected and
transformed again, which involves functions that do not occur with a generic
computer. Reply Br. 2, 6—7. Further, Appellant argues that since the claims
are novel (because the other rejections are based upon obviousness),
accordingly, they require more than a generic computer. Reply Br. 3.
The Examiner determines that representative claim 1 recites gathering
data, selecting data points combining and producing a visual display, which
merely recites an abstract idea because it is based upon processing data
through mathematical relationships. Ans. 4. Further, the Examiner
differentiates the current claims from those at issue in Diehr, determining
the claims in Diehr recite an algorithm as part of a manufacturing process
whereas the instant claims recite data processing. Ans. 4—5.
4
Appeal 2016-000593
Application 13/367,617
We concur with the Examiner that independent claim 1 is directed to
an abstract concept and does not recite significantly more than an abstract
concept. We note Appellant’s arguments that the claimed processing
involves sound waves that are reflected and transformed again, does not
persuade us the invention is not reciting an abstract concept. The claim
recites a step of “using seismic data stored on a computer storage medium,”
and the data is described as being produced by generated sound waves.
Thus, the claim is merely directed to the processing of the data, and does not
recite a step of generating the data.
We concur with the Examiner that representative claim 1 recites an
abstract concept. Claim 1 recites utilizing stored seismic data, extracting a
horizon from the data (data analysis), selecting plural points, combining
information (data analysis), combining points (data analysis) and producing
a visual display, all of which is directed to an abstract concept. The Federal
Circuit has explained that, in determining whether claims are patent-eligible
under Section 101, “the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). The Federal Circuit also noted in that decision that “examiners
are to continue to determine if the claim recites (i.e., sets forth or describes)
a concept that is similar to concepts previously found abstract by the courts.”
Amdocs, 841 F.3d at 1294 n.2 (citation omitted). The instant claims,
directed to obtaining stored data, and analyzing it to produce a visual
representation is similar to the claims at issue in Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that claims
directed to a process of gathering and analyzing information of a specific
5
Appeal 2016-000593
Application 13/367,617
content are directed to an abstract idea). They are also similar to those at
issue in Content Extraction & Transmission LLC. v. Wells Fargo Bank,
National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that the
claims were “drawn to the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory.”). Thus, we concur with the Examiner that claim 1 is directed
to the use of an abstract idea.
With respect to the second part of the Alice analysis, we do not
consider representative clam 1 to recite significantly more than an abstract
idea. Appellant argues that:
The claim limitations are very specific to seismic data
obtained through measuring physical phenomenon — the
transmission and receipt of acoustic signals. The claims
comprise improvements to the technical field of seismic
acquisition and production of intelligence regarding subsurface
formation. . . .
As discussed above, the claims set forth a method of
physical transformation wherein seismic data utilized is
produced by generating sound waves, the sound waves are
transformed by reflection, and then transformed again as the
acoustic energy is transformed during measurement into analog
electrical signals, digitized, measured for electrical energy, and
then searched to determine horizons of relatively constant
geologic time comprising peaks, troughs, and zero crossings.
Reply Br. 6—7. These arguments that the claim recites significantly more are
not persuasive as the arguments are not commensurate in scope with
representative claim 1. As discussed above, claim 1 merely recites utilizing
data but not generating the data or transforming acoustic waves. Further, the
use of a computer to perform an abstract concept does not lead to a
conclusion that the claim recites significantly more. “[T]he use of generic
computer elements like a microprocessor or user interface do not alone
6
Appeal 2016-000593
Application 13/367,617
transform an otherwise abstract idea into patent-eligible subject matter.”
FairWarning IP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014)). See also Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S.Ct. 2347 (2014).
Appellant’s arguments, on pages 6 and 7 of the Appeal Brief,
asserting that the claims do not block others from using the abstraction, is
not persuasive that the claims are directed to patent eligible material. Pre­
emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281(Fed. Cir.
2013). See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
7
Appeal 2016-000593
Application 13/367,617
Thus, we do not find that representative claim 1 recites significantly more
than the abstract idea and sustain the Examiner’s 35 U.S.C. § 101 rejection
of claim 1 and claims 3 through 11, and 13 through 18 grouped with claim 1.
Rejections under 35 U.S.C. $ 103
Claims 1 and 11
Appellant argues that the Examiner’s obviousness rejection of claims
1 and 11 is in error as: Huang is non-analogous art, the skilled artisan would
not combine Lomask and Huang, and the combined teachings do not teach
selecting a first and second group of points as recited in claim 1. App. Br.
19-22.
The Examiner responds to these points on pages 5 through 7 of the
Examiner’s Answer. We have reviewed the Examiner’s response, concur
with the Examiner’s findings and conclusions, and are not persuaded of error
by Appellant’s arguments.
With respect to Appellant’s arguments that Huang is not analogous
art, the Examiner finds Huang is directed to analyzing data points and curve
fitting and thus, is analogous to Lomask and the Appellant’s claims. Ans. 5.
We concur. The test for non-analogous art is first whether the art is within
the field of the inventor’s endeavor and, if not, whether it is reasonably
pertinent to the problem with which the inventor was involved. In re Wood,
599 F.2d 1032, 1036 (CCPA 1979). A reference is reasonably pertinent if,
even though it may be in a different field of endeavor, it logically would
have commended itself to an inventor’s attention in considering his problem
because of the matter with which it deals. In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992). We find Huang’s method of analyzing data points for
curve fitting is reasonably pertinent to Appellant’s claimed method of
8
Appeal 2016-000593
Application 13/367,617
producing a display of data points. Accordingly, we concur with the
Examiner that Huang is analogous art to Appellant’s claimed invention.
Appellant’s arguments, directed to the combination of the references,
assert that Huang does not help the data loss during compression that
Lomask is directed to. App. Br. 21. Further, Appellant asserts that
eliminating discontinuous data points appears to frustrate Lomask’s
teachings. App. Br. 21—22.
The Examiner has provided a rationale on page 6 of the Answer. (See
also Final Act. 9). The Examiner’s rationale for combining Huang and
Lomask is to smooth measured points. Thus, Appellant’s arguments
directed to data loss compression or eliminating discontinuities do not
address the Examiner’s findings and conclusions. Accordingly, we are not
persuaded the Examiner erred in combining Huang and Lomask.
Appellant’s arguments that the combined references do not teach
selecting a first and second group of points assert that Huang’s formula
X’=(X0+ Xi+ X2)/3 does not used two groups of points as claimed. App. Br.
22, Reply Br. 8.3
The Examiner’s response to this argument cites to Huang’s Figure 15,
and explains how the Examiner considers points X0 to be one group and
points Xi and X2 to be the second group used to generate a new point. Ans.
7. We concur with the Examiner, and note that although the Example cited
by the Examiner only contains three points, we consider it obvious to an
3 We note that claim 1 recites “said plurality of data points comprise a first
group of data points and a second group of said data points.” This recitation
contains an ambiguity because it is unclear as to whether “said data points”
is referring to the first group of points, (i.e. the second group is a subset of
the first) or the plural data points. Appellant’s specification is clear that the
first and second group are part of the plural data points.
9
Appeal 2016-000593
Application 13/367,617
ordinarily skilled artisan, to include more points and as such there could be
more than two points in each group and indeed, we do not consider
modifying the group to be “uniquely challenging or difficult for one of
ordinary skill in the art” or “represent^ an unobvious step over the prior
art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Thus, we are not persuaded of error in the Examiner’s
rejection of claim 1 and sustain the Examiner’s rejection of claim 1 and
claims 6, 9, 10, 15, 17, and 18 grouped with claim 1.
Claims 3 and 13
With respect to claims 3 and 13, Appellant asserts that the rejection is
in error as “the Lomask method adds or transforms the data to the
chronostratigraphic time of deposition rather than restricting the data at any
particular range to depth or time” App. Br. 23.
The Examiner responds that Lomask teaches specifying values of
seismic time/depth. Ans. 8 (citing Lomask par. 35). We concur with the
Examiner’s finding. Claim 3 cites that the information to be combined is
depth or time information; thus, the claim does not recite restricting the data
to a depth and, furthermore, Appellant’s arguments are not commensurate
with the scope of the claim. Accordingly, we sustain the Examiner’s
rejection of claims 3 and 13.
Claims 7 and 14
With respect to claims 7 and 14, Appellant argues that:
Lomask does not transform the horizons to a time/depth
vertical axis but instead transforms the horizons into a
chronostratigraphic time of deposit. Therefore Lomask would
not utilize a time or depth in each computation point based on
the time or depth information in the first group of data points
10
Appeal 2016-000593
Application 13/367,617
and the second group of data points as proposed by the
Examiner.
App. Br. 23-24.
We are not persuaded of error by these arguments. As discussed
above with respect to claim 3, the Examiner finds and we agree that Lomask
teaches the combined data relates to depth information. See also Ans. 9.
Accordingly, we sustain the Examiner’s rejection of claims 7 and 14.
Claims 8 and 16
With respect to claims 8 and 16, Appellant argues that the claims
recite changing the number of data points with different computational
points. App. Br. 24.
The Examiner responds to these arguments finding that Huang teaches
selecting new computational points. Ans. 10 (citing Huang Fig. 15).
We concur with Appellant. The Examiner has not shown that Huang
teaches the number of data points in the group changes with different
computational points. Rather, the figure just shows that different groups of
points will be used with different computational data points.4 Accordingly,
we do not sustain the Examiner’s rejection of claims 8 or 16.
Claims 4 and 5.
Appellant argues that the Examiner’s rejection is in error as: the
Examiner has not explained how the teachings of Bhattacharjya are being
applied to reject the claims, the teachings of Bhattacharjya are non-
4 As discussed above we consider it obvious to use two or more points in
each group, but we do not find evidence to suggest that it would be obvious
to change the number of points in each group for different computational
points.
11
Appeal 2016-000593
Application 13/367,617
analogous art, and the Examiner has not provided a proper rationale to
combine the references. App. Br. 25—27.
The Examiner responds by finding that Bhattacharjya teaches
increasing sample points will increase resolution. Ans. 11 and 13 (citing
Bhattacharjya Fig. 2A and Col. 10,11. 47—60). Further, the Examiner finds
that the references are all in the analogous art because Bhattacharjya teaches
using data points to determine level of display information. Ans. 12.
We agree with Appellant. Bhattacharjya is directed to a method for
color correction, the sample points discussed in the cited portions are
directed to a sample points of printed color patches. Abstract, Col. 9,11. 19—
21 and 44-46. We are not persuaded Bhattacharjya’s teachings are in same
field of endeavor or reasonably pertinent to the claimed invention.
Accordingly, we do not sustain the Examiner’s rejection of claims 4 and 5.
DECISION
We affirm the Examiner’s rejection of claims, 1, 3 through 11, and 13
through 18 under 35 U.S.C. § 101; claims 1, 3, 6, 7, 9 through 11, 13
through 15, 17, and 18 under 35 U.S.C. § 103. We do not sustain the
Examiner’s rejections of claims 4, 5, 8, and 16 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
12