John Theodore. Etgen et al.

Patent Trials and Appeals Board

Sep 12, 2019

14677585 - (D) (P.T.A.B. Sep. 12, 2019)

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.
14/677,585 04/02/2015 John Theodore Etgen 500343 US 3048
4249 7590 09/12/2019
CAROL WILSON
BP AMERICA INC.
150 West Warrenville Road
MC 200-1W
Naperville, IL 60563
EXAMINER
TURNER, BRIAN
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
bppatentus@bp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN THEODORE ETGEN and CHUNLEI CHU
____________

Appeal 2018-009166
Application 14/677,585
Technology Center 2800
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
LILAN REN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicants1 (“Appellants”) appeal under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 1–20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is identified as “BP Exploration Operating
Company Ltd., a wholly owned subsidiary of BP, PLC” (Corrected Appeal
Brief filed June 19, 2018 (“Appeal Br.”), 2 (not paginated)).
2 Appeal Br. 5–13; Final Office Action entered November 16, 2017 (“Final
Act.”), 2–8; Examiner’s Answer entered July 25, 2018 (“Ans.”), 2–11.
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I. BACKGROUND
The subject matter on appeal relates to seismic data imaging
(Specification filed April 2, 2015 (“Spec.”), ¶ 3). The Appellants state that a
common technique used in imaging seismic data is known as data
“migration,” which uses a “velocity model” (or more generally, a
“subsurface attribute model”) that results in an image of the subterranean
formation (id. ¶ 9). The Appellants explain, however, that the “[s]eismic
image quality dependency on the migration velocity model becomes
progressively higher as geological complexity increases” and that certain
degrees in imperfections in the velocity models are expected (id. ¶ 10). The
Appellants explain that, for example, in the Gulf of Mexico where salt is a
dominant structural element, “inadequate velocity models have long been
recognized as one of the main obstacles to the delivery of good quality
seismic images” (id. ¶ 11). The Appellants’ improved technique is
described as “directed to resolving, or at least reducing, one or all of the
problems” in the described prior art techniques (id. ¶ 12).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A method for use in seismic exploration, comprising:
accessing a set of seismic data representative of a
subterranean geological formation and a subsurface
attribute model of the subterranean geological
formation;
performing a wavefield extrapolation on the seismic data
in the subsurface attribute model;
applying a time-shift extended imaging condition to the
extrapolated wavefields;
forming shot-indexed, time shift gathers for each image
pixel of the subsurface attribute model from the
conditioned extrapolated wavefields;
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adaptively focusing the gathers using a processor, the
adaptive focusing comprising determining for each
trace in the gather the amount of time shift to apply
to yield a zero time lag for that trace and applying
the determined time shift to each respective trace;
stacking the adaptively focused gathers using the
processor; and
imaging the subterranean geological formation from the
stacked, adaptively focused gathers using the
processor.
(Appeal Br. 14 (Claims Appendix)). The two other independent claims,
namely claims 8 and 14, are directed to a computing apparatus and a non-
transitory program storage medium encoded with instructions, respectively
(id. at 15–16, 17).
II. REJECTION ON APPEAL
Claims 1–20 stand rejected under 35 U.S.C. § 101 as patent-ineligible
because these claims are directed to a judicial exception without reciting
significantly more (Ans. 2–11; Final Act. 2–8).
III. DISCUSSION
1. The Examiner’s Position
The Examiner finds that, except for the “accessing a set of seismic
data” and the “imaging the subterranean geological formation” steps, the
limitations in all other steps recited in claim 1 constitute an abstract idea
(Final Act. 2–3). In the Examiner’s view, the limitations constituting the
abstract idea are “analogous to” collecting information, analyzing it, and
displaying certain results of the collection analysis, which have been
identified as patent-ineligible in court decisions (id. at 3 (citing, e.g., Elec.
Power Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016))). The Examiner
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acknowledges that the claim “does contain ‘additional elements’ other than
the abstract idea, but [finds that] these are not sufficient to make the claim as
a whole amount to significantly more than the abstract idea itself” (id.; see
also id. 3–4). The Examiner states that “[r]ather than being a particular
limited application of the abstract idea which serves to improve a specific
method or device, the claim would tend to monopolize the abstract idea itself
in practice” (id. at 4).
2. The Appellants’ Principal Contentions
The Appellants contend that the claims on appeal are not directed to
an abstract idea because claims “directed to improvements to computer-
related technologies or technological processes beyond computer
improvements do not present an ‘abstract idea’ under the first part of the
Alice/Mayo[3] test” (Appeal Br. 5–6 (citing MPEP §§ 2106.04(a)(1),
2106.06(b); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1316 (Fed. Cir. 2016); In re Abele, 684 F.2d 902 (CCPA 1982), overruled in
part on other grounds, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc),
aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010)).
Specifically, the Appellants assert that “[s]eismic imaging is a long,
well established technology stretching well back into the last century that
has long enjoyed a status as patent eligible subject matter” (id. at 6).
Consistent with that approach and legal precedents, the Appellants argue that
the claimed invention is patent-eligible because it is an improvement over
existing technology (id. at 7). According to the Appellants, seismic data

3 See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77
(2012)).
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imaging involves transformation of raw seismic data into an image of a
subterranean geological formation consistent with Abele, which stands for
the proposition that a computer-implemented process is patent-eligible
where the data operated upon is representative of real world objects (id. at
7–10).
Furthermore, the Appellants argue that under the second prong of the
Alice/Mayo test, the improvements amount to “significantly more” (id. at
10–11). According to the Appellants, the Examiner “stripped out the
individual elements of the claims and considered them individually rather
than the claim as a whole as is required” and failed to support the allegation
that the improvements were merely conventional, routine, or well-known as
required by PTO policy (id. at 11–12).
3. Opinion
For the reasons discussed below, we agree with the Appellants that the
claimed subject matter has not been shown to be patent-ineligible as directed
to a judicial exception without reciting significantly more. Because the
Examiner’s reasoning is basically the same for both independent claims 1, 8,
and 14 (Final Act. 2–6), we focus our discussion solely on claim 1.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice, 573 U.S. at 216.
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance
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with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101 with regard to the first step of the Alice/Mayo test (i.e., Step 2A of the
USPTO’s Subject Matter Eligibility Guidance as incorporated into MPEP
§ 2106). USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Revised Guidance”). 84 Fed. Reg. 50 (Jan. 7, 2019).
Thus, under Step 1 of the Guidance, as revised, we determine whether the
claimed subject matter falls within the four statutory categories: process,
machine, manufacture, or composition of matter. Step 2A of the Guidance is
two-pronged, under which we look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
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human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
We find that, under Step 1 of the Guidance, claim 1 falls within the
four statutory categories of patent subject matter identified by 35 U.S.C.
§ 101. Specifically, claim 1 recites a method for use in seismic exploration.
Under Step 2A, we find that claim 1 recites the steps of “performing a
wavefield extrapolation on the seismic data in the subsurface attribute
model,” “applying a time-shift extended imaging condition to the
extrapolated wavefields,” and “forming shot-indexed, time shift gathers for
each image pixel of the subsurface attribute model from the conditioned
extrapolated wavefields.” Although these steps, when read in isolation may
be considered as mental processes or abstract ideas, the claimed subject
matter as a whole is directed to “an improvement in the functioning of a
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computer or other technology or technological field” as we explain further
below and is, therefore, patent-eligible. 84 Fed. Reg. at 53 (“[A]n
improvement in the functioning of a computer or other technology or
technological field may render a claim patent eligible at step one of the
Alice/Mayo test even if it recites an abstract idea, law of nature, or natural
phenomenon.”); Diehr, 450 U.S. at 187 (“[A] claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it uses a
mathematical formula, computer program, or digital computer.”). See also
In re Bilski, 545 F.3d at 963 (“[E]lectronic transformation of the data itself
into a visual depiction in Abele was sufficient.”).
Consistent with the Appellants’ position (Appeal Br. 6–10 (relying on
Spec. ¶¶ 18, 69, 93; Figs. 5A and 5B)), we find that the invention recited in
claim 1 is described as providing an improvement in a computer-
implemented technology, namely seismic data imaging. See, e.g., Spec. ¶ 7
(“The processing [of seismic data] is . . . computationally intensive . . . [and]
therefore uses large, powerful computing systems with large, high capacity
storage to perform this part of the analysis.”); ¶ 12 (“The presently disclosed
technique is directed to resolving, or at least reducing, one or all of the
problems mentioned [in the Specification]”); ¶ 34 (“The method operates
inside an otherwise conventional seismic migration algorithm by applying an
extended imaging condition with a series of positive and negative time
shifts, including zero (a zero time shift corresponding to the conventional
imaging condition), and preserving the migrated records without stacking.”).
Because the subject matter recited in claim 1 is described as an
improvement in computer-implemented seismic data imaging technique and
that description has not been adequately addressed or rebutted by the
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Examiner, we conclude that the rejection fails at Step 2A of the Guidance.
Therefore, we need not reach Step 2B.
That being said, the Examiner’s mere citation to conventional seismic
data imaging techniques (Ans. 9–10) fails to rebut the Appellant’s position
that the claims are directed to an improvement to a computer-implemented
technology, let alone support a finding that the described improvements
captured by the claimed subject matter as a whole were well-understood,
routine, and conventional. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369
(Fed. Cir. 2018) (explaining that improvements described in the
specification, to the extent they are captured in the claims, must be
considered in determining whether the invention describes well-understood,
routine, and conventional activities).
IV. SUMMARY
The Examiner’s final decision to reject claims 1–20 as patent-
ineligible under 35 U.S.C. § 101 is reversed.

REVERSED