Lecocq, Paul Download PDFPatent Trials and Appeals BoardMay 11, 20202019001235 (P.T.A.B. May. 11, 2020) Copy Citation 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. 13/895,179 05/15/2013 Paul Lecocq PGS-12-56US 1059 137491 7590 05/11/2020 OLYMPIC PATENT WORKS PLLC P.O. BOX 4277 SEATTLE, WA 98104 EXAMINER CROHN, MARK I ART UNIT PAPER NUMBER 2857 NOTIFICATION DATE DELIVERY MODE 05/11/2020 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): docketing@pgs.com joanne@olympicpatentworks.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL LECOCQ Appeal 2019-001235 Application 13/895,179 Technology Center 2800 BEFORE CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and BRIAN D. RANGE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 appeals from the Examiner’s decision to reject claims 1–31. The Examiner rejects claims 1– 31 under 35 U.S.C. § 101 as patent ineligible and under 35 U.S.C. § 103 as obvious. Final Act. 9–22. We have jurisdiction under 35 U.S.C. § 6(b). Because we sustain the 35 U.S.C. § 101 rejection, we AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as PGS Geophysical AS. Appeal Br. 1. Appeal 2019-001235 Application 13/895,179 2 CLAIMED SUBJECT MATTER The claims are directed to an improvement in a process for monitoring a petroleum reservoir of a subterraneous formation (see, e.g., claim 1), a computer system used to perform the monitoring (see, e.g., claim 9), a non- transitory computer-readable medium having machine-readable instructions encoded thereon for enabling one or more processors of a computer system to perform the monitoring (see, e.g., claim 17), and a method for generating a geophysical data product (see, e.g., claim 25). The body of each independent claim recites steps of manipulating data sets (generating reconstructed monitor data sets, computing 4D difference data sets, and extracting 4D signal data). Claim 25 is representative: 25. A method for generating a geophysical data product, the method comprising: processing monitor data sets using a programmable computer that is programmed to generate the geophysical data product, wherein the processing includes retrieving a first monitor data set from one or more computer-readable media; retrieving a second monitor data set from the one or more computer-readable media; generating a reconstructed first monitor data set at source and receiver locations of a second monitor data set; generating a reconstructed second monitor data set at source and receiver locations of the first monitor data set; computing two different four-dimensional (“4D”) difference data sets from the first monitor data set, the reconstructed first monitor data set, the second monitor data set, and the reconstructed second monitor data set; extracting 4D signal data common to the 4D difference data sets; and Appeal 2019-001235 Application 13/895,179 3 generating an image of the subterranean formation using at least in part the common 4D signal data, the image representing changes in the petroleum reservoir between the first and second surveys. Appeal Br. 40–41 (Claims Appendix). REFERENCES Name Reference Date El Ouair US 2008/0195358 A1 Aug. 14, 2008 Schonewille US 2009/0231956 A1 Sept. 17, 2009 Hegge US 2010/0329079 A1 Dec. 30, 2010 Manning Ted Manning et al., Quantifying and increasing the value of multi-azimuth seismic The Leading Edge, 510–512, (2007) 2007 REJECTIONS The Examiner maintains the following rejections: 1. Claims 1–31 under 35 U.S.C. § 101 as patent ineligible; 2. Claims 1, 4, 5, 7–9, 12, 13, 15–17, 20–22, 24–26, 29, and 30 under 35 U.S.C. § 103 as unpatentable over El Ouair in view of Hegge; 3. Claims 2, 3, 10, 11, 18, 19, 27, and 28 under 35 U.S.C. § 103 as unpatentable over El Ouair in view of Hegge and Schonewille; and 4. Claims 6, 14, 23, and 31 under 35 U.S.C. § 103 as unpatentable over El Ouair, Hegge, Schonewille, and Manning. Appeal 2019-001235 Application 13/895,179 4 OPINION Patent Eligibility The Examiner rejected claims 1–31 under 35 U.S.C. § 101, determining them ineligible because “the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more in the claim(s) than the abstract idea itself.” Final Act. 9. Use of Office Guidance There is a threshold issue we address first. The Examiner analyzed the question of patent eligibility using the 2014 Interim Guidance on Patent Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014) (2014 Guidance). Final Act. 9. The issue is whether the Examiner reversibly erred in relying on the 2014 Guidance “because the Federal Register, like the MPEP, does not have force of law.” Appeal Br. 6. Appellant’s argument has little merit. As pointed out by the Examiner, although the 2014 Guidance does not have the force of law, it reflects the USPTO’s expert understanding of the applicable statute and case law. Ans. 6. As stated in the 2014 Guidance, “[r]ejections will continue to be based upon the substantive law, and it is these rejections that are appealable.” Id. at 74619, col. 3, first full para. To the extent any Office guidance “contradicts or does not fully accord with [Federal Circuit] caselaw, it is [Federal Circuit] caselaw, and the Supreme Court precedent it is based upon, that must control.” In re Rudy, No. 2019-2301, 2020 WL 1966855, at *2 (Fed. Cir. Apr. 24, 2020). Using Office guidance as scaffolding for the analysis is not itself an error. Appeal 2019-001235 Application 13/895,179 5 To identify an error in the Examiner’s rejection, Appellant must substantively respond to the merits of the Examiner’s rejection, i.e., identify an error in the fact findings, analysis, and conclusions of law critical for supporting the rejection under the controlling law. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (holding that Appellant does not have “the right first to procedurally challenge and appeal the prima facie procedural showing before having to substantively respond to the merits of the rejection.”). On the merits, we consider whether Appellant has identified an instance in which the Examiner’s analysis is not in accord with the relevant caselaw of the Supreme Court and Federal Circuit. The Federal Circuit conducts this type of review. See Rudy, at *3 (“although a portion of the Board’s analysis is framed as a recitation of the Office Guidance, in this particular case the Board’s reasoning and conclusion are nevertheless fully in accord with the relevant caselaw.”). The Law on Eligibility Appellant’s overarching argument on the merits is that the Examiner has not properly applied the framework found in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (Alice framework). Appeal Br. 7–22. To provide context for Alice framework, we summarize the law as follows. Patent eligibility is governed by § 101, which states that patents may be granted for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Although the statutory language is expansive, the Supreme Court has held that it “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Appeal 2019-001235 Application 13/895,179 6 Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). As pointed out by Appellant, the primary concern behind the exception is one of pre-emption. Appeal Br. 6; see Alice, at 216 (“We have described the concern that drives this exclusionary principle as one of pre- emption.”). This pre-emption concern is a “concern that patent law not inhibit further discovery by improperly tying up the future use of [the] building blocks of human ingenuity,” i.e., laws of nature, natural phenomena, and abstract ideas. Id. (citation omitted). “‘[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,’ thereby thwarting the primary object of the patent laws.” Id., (quoting Mayo, at 70 and citing U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power . . . . To promote the Progress of Science and useful Arts”)). The key is to distinguish between claims tying up those “building blocks of human ingenuity” and claims to an invention that integrates the building blocks into something more, thereby transforming them into a patent-eligible invention. Alice, at 217. To distinguish between claims that improperly pre-empt the building blocks of human ingenuity (ineligible claims) and those that integrate the building blocks into something more (eligible claims), the Supreme Court has devised a two-step framework. Alice at 217–218 (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)) (Alice/Mayo framework). The first step in that framework involves determining “whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Alice, 573 U.S. at 217 (emphasis added). The Federal Appeal 2019-001235 Application 13/895,179 7 Circuit has alternately described this inquiry as “looking at the ‘focus’ of the claims.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335– 36 (Fed. Cir. 2016)). If the claims are directed to an ineligible concept, i.e., if they focus on one of the building blocks of human ingenuity, such as an abstract idea, we move to step two and “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, at 217 (quoting Mayo, at 77–78). This step represents “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.’” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73) (internal quotations and alterations omitted). The Patent Office’s 2019 Guidance terms the “directed to” question Step 2A and divides the analysis into two prongs. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”); October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (available at (https://www.uspto.gov/Patent Eligibility) (“October 2019 Update”). In Prong 1, we determine whether the claim recites one of the abstract ideas discussed in Section I of the 2019 Guidance, which lists mathematical concepts, certain methods of organizing human activity, such as a fundamental economic practice, and mental processes. 2019 Guidance, 84 Fed. Reg., at 54 (§ III.A.1). A claim that includes one of these abstract ideas must be further reviewed in Prong 2 to Appeal 2019-001235 Application 13/895,179 8 determine whether the claim integrates the abstract idea into a practical application by imposing a meaningful limit on the judicial exception. 2019 Guidance, at 54 (§ III.A.2). Alice Step One Appellant contends that the Examiner has not properly applied the first step of the Alice framework. Appeal Br. 8–10. First, Appellant contends that the Examiner did not explain what fundamental building block of human ingenuity would be prohibited from future use and “incorrectly identified the claims as a mathematical algorithm.” Appeal Br. 8. We disagree. The Examiner determines that the claims recite mathematical concepts in the steps of generating reconstructed first and second monitor data sets, computing 4D difference data sets, and extracting 4D signal data common to the 4D difference data sets. Final Act. 10. Appellant does not dispute that “[t]he claims use mathematical formulas.” Appeal Br. 8. There is no real question that the claims recite mathematical concepts in accordance with Prong 1 of the 2019 Guidance. Next we consider whether the claim integrates the abstract idea into a practical application by imposing a meaningful limit on the judicial exception as required by Prong 2 of the 2019 Guidance and consider the “focus” of the claim to complete the Alice Step One analysis. Appellant’s generating, computing, and extracting sets are performed on a computer and the computer is merely a tool for performing the mathematical calculation steps. See, e.g., claim 25 (stating the method as comprising “processing monitor data sets using a programmable computer that is programmed to” perform the steps); claim 17 (reciting the steps as Appeal 2019-001235 Application 13/895,179 9 operations performed by a computer system); claim 9 (having the steps recited as part of a routine executed by processors). Using a generic computer to implement a mathematical concept generally is not an integration. See Mayo, 566 U.S. at 80, 84 (noting that the Court in Diehr found “the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,” but the Court in Benson “held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle”). As to the focus of the claims, Appellant contends “[c]laims 1–31 are directed to monitoring a production of a petroleum reservoir by generating an image of a subterranean formation that represents changes in the petroleum reservoir between first and second surveys.” Id.; see also Reply Br. 3 (“The process, computer system, computer-readable medium, and geophysical data product described in claims 1–31 are directed to new and useful techniques for generating an image of a subterranean formation.”). In other words, Appellant contends that the focus of the claims is on the monitoring and image generating aspects of the process rather than on the mathematical concepts. Appellant’s argument is not persuasive. We determine that the so called “new and useful techniques” reside in the mathematical calculations of the data set generating, computing, and extracting steps. In claim 1, for instance, the data gathering steps are recited in the Jepson preamble, which provides evidence those data gathering steps were well-known in the art, and the step of generating an image has no detail except for the recitation of the use of the common 4D signal data extracted using the mathematical Appeal 2019-001235 Application 13/895,179 10 calculations. Claims 9, 17, and 25 provide further evidence that the improvement is in the calculations. Claim 9 recites a computer system that is a tool for performing mathematical calculations. Claim 17 recites a computer readable medium with instructions for performing the calculations. Claim 25 recites a method for generating a geophysical data product, which involves performing the calculations. Thus, the claims themselves are evidence that they are focused on mathematical concepts and “directed to” an abstract idea. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical calculations based on selected information” are directed to abstract ideas). The Specification provides further evidence to support the Examiner’s “directed to” determination. See, e.g., Spec. ¶ 18 (“Computational methods and systems for monitoring a petroleum reservoir below a marine environment are described.”) (emphasis added); Spec. ¶ 46 (disclosing reconstruction as involving interpolation and anti-leakage Fourier reconstruction); Spec. ¶ 48 (describing computing 4D differences using equations (1) and (2)). These mathematical computational steps are used “[i]n order to obtain accurate images of the 4D difference.” Spec. ¶ 42. The step of generating an image is focused on using the data from the mathematical calculations, i.e., “using at least in part the common 4D signal data” to generate the image. Claims 1, 9, 17, and 25, last step. The Specification discusses the mathematical steps in detail, but provides almost no detail on the step of generating an image beyond the use of the mathematical steps. See Spec. ¶¶ 39–53 (discussing the steps of processing the monitor data and only mentioning images once in the context of conducting the monitor surveys as close as possible to the baseline survey). Appeal 2019-001235 Application 13/895,179 11 Further, the computer system of claim 9 is a tool for running the computer program of claim 17 to generate the geophysical data product of claim 25. We determine the focus is on the tasks for which a computer is used in its ordinary capacity, i.e., as a tool for carrying out mathematical calculations. For eligibility, “it is not enough . . . to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020). Appellant has not identified a reversible error in the Examiner’s determination that the claims are “directed to” an abstract idea in the form of mathematical concepts. Alice Step Two Because the claims are directed to an abstract idea, we move to step two of the Alice framework. Here, we consider whether an additional element or combination of elements adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present or whether the element or whether the combination instead appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. Alice, 573 U.S. at 221, 225; 2019 Guidance, at 56. We determine that the combination appends well-understood, routine, conventional elements and activities to the mathematical concepts recited in the body of the claims. Appeal 2019-001235 Application 13/895,179 12 Claim 1 evinces that the surveying apparatus that performs the data gathering was known in the art. The claim is in Jepson format with the survey apparatus recited in the preamble. Other than the fact that the step of generating an image uses the common 4D signal data obtained from the data processing steps, we find nothing unconventional about generating an image from seismic data. The Specification does not describe generating an image with any kind of detail that indicates it was unconventional outside of its use of the extracted data set. Generating the image is a central goal of the conventional seismic surveying process. See, e.g., El Ouair ¶ 6 (“Seismic reflection data obtained by field experiments are then processed to obtain a three dimensional image of subsurface structures as described above.”); Hegge ¶¶ 7–8 (explaining that “[t]he goal of seismic data processing is to extract from the seismic data as much information as possible regarding the subterranean formations in order to adequately image the geologic subsurface.”). A preponderance of the evidence supports the Examiner’s determination that “[t]he presentation of mathematically processed data as an image is well-understood, routine and conventional in the art and describes a result rather than a detailed process of rendering the data as an image.” Final Act. 11. Appellant has added conventional steps that do not make the combination patentable. See Mayo, 566 U.S. at 82 (“[S]imply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.”); Ericsson Inc. v. TCL Commc'n Tech. Holdings Ltd., No. 2018-2003, 2020 WL 1856498, at *9 (Fed. Cir. Apr. 14, 2020) (“when a claim ‘does no more than require a generic computer to Appeal 2019-001235 Application 13/895,179 13 perform generic computer functions,’ as here, the claims lack an inventive concept sufficient to demonstrate eligibility at step two.” (quoting Alice, 573 U.S. at 225)); Customedia Techs., 951 F.3d at 1366 (“[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance . . . amounts to a recitation of what is well-understood, routine, and conventional.’” (quoting SAP, 898 F.3d at 1170). Stated another way, the step of generating an image amounts to insignificant post-solution activity that, when considered along with the other steps, does not transform the abstract mathematical concepts into something patentable. Alice, at 1283; see also Mayo, at 79 (quoting Diehr, at 191–92) (“The prohibition against patenting abstract ideas cannot be circumvented by adding insignificant post-solution activity” (internal quotation marks omitted)). As determined by the Examiner, the improvement is found in the abstract mathematical concept and, thus, remains ineligible. Ans. 9. Although the collection of the data is limited to the environment of monitoring a petroleum reservoir, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP, 898 F.3d at 1168 (citation omitted.). We sustain the Examiner’s determination of ineligibility under 35 U.S.C. § 101. Appeal 2019-001235 Application 13/895,179 14 Obviousness The Examiner rejects claims 1, 4, 5, 7–9, 12, 13, 15–17, 20–22, 24– 26, 29, and 30 as obvious over El Ouair in view of Hegge and adds further prior art references to reject the remaining claims. Final Act. 12–22. Appellant’s arguments focus on the rejection of claim 1. Appeal Br. 23. As the issues are the same for all the rejections, we select claim 1 as representative for resolving those issues. But in selecting claim 1, we are cognizant that claims 9, 17, and 25 are broader in the recitation of the computing steps. Although claim 1 recites two separate steps, each taking the difference between two specific data sets, claims 9, 17, and 25 are open to computing the 4D difference data sets using any combination of the four data sets. The major dispute stems from the Examiner’s interpretation of the computing steps of the independent claims as broad enough to encompass the normalizing and data comparing steps taught or suggested by El Ouair in view of Hegge. Compare Final Act. 12–16, and Ans. 28–40, with Appeal Br. 23–34, and Reply Br. 18–23. We agree with Appellant that the Examiner’s findings with regard to the computing steps falls short of supporting a conclusion of obviousness. Although we agree with the Examiner that the combination of El Ouair and Hegge suggests generating reconstructed monitor data sets and computing a 4D difference data set, a preponderance of the evidence fails to support the Examiner’s finding of a suggestion for computing two different 4D difference data sets using all four data sets recited in the claims and extracting 4D signal data common to those two different 4D difference data sets. Appeal 2019-001235 Application 13/895,179 15 In discussing the use of the difference data to indicate the reservoir change over time, El Ouair refers to “the proper time-alignment during pre- processing.” El Ouair ¶ 12. Hegge discloses that because source and receiver locations in recorded data are seldom precisely coincident, it may be necessary to “regularize the data sets to a nominal geometry” so that source and receiver locations are coincident. Hegge ¶ 51. El Ouair describes correctly positioning the data in space by a process called migration. El Ouair ¶ 4. Both El Ouair and Hegge provide evidence that reconstruction of the data was known in the art for aligning the data before computing a 4D difference data set. As the Examiner says, [t]he normalization/regularization is ‘necessary’ in the sense that the original monitor data sets represent data situated in different geographical locations (the first and second source and receiver locations), so taking a ‘difference’ between the data sets would not produce a sensible result until that they are ‘reconstructed’; that is, until they are normalized/regularized so they both reflect data situated in a common geographical space. Ans. 37. The problem is that the Examiner has not established that the prior art teaches or suggests “computing two different 4D difference data sets from the first monitor data set, the reconstructed first monitor data set, the second monitor data set, and the reconstructed second monitor data set” and “extracting 4D signal data common to the 4D difference data sets.” Claims 9, 17, 25 (emphasis added). At best, El Ouair and Hegge suggest reconstructing two data sets and taking the difference of the two reconstructed data sets. The Examiner has not provided evidence or technical reasoning sufficient to indicate that the ordinary artisan would have used both non-reconstructed (monitor) and reconstructed data sets in Appeal 2019-001235 Application 13/895,179 16 the difference calculations and then extracted 4D signal data common to those two 4D difference data sets. The Examiner’s application of further prior art references to reject dependent claims does not cure the deficiencies. Thus, we do not sustain any of the Examiner’s obviousness rejections. DECISION Because we sustain the Examiner’s 35 U.S.C. § 101 rejection, the Examiner’s decision to reject claims 1–31 is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–31 101 Eligibility 1–31 1, 4, 5, 7–9, 12, 13, 15– 17, 20–22, 24–26, 29, 30 103 El Ouair, Hegge 1, 4, 5, 7–9, 12, 13, 15– 17, 20–22, 24–26, 29, 30 2, 3, 10, 11, 18, 19, 27, 28 103 El Ouair, Hegge, Schonewille 2, 3, 10, 11, 18, 19, 27, 28 6, 14, 23, 31 103 El Ouair, Hegge, Schonewille, Manning 6, 14, 23, 31 Overall Outcome 1–31 Appeal 2019-001235 Application 13/895,179 17 TIME PERIORD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation