Tang, Yaxun et al.

Patent Trials and Appeals Board

Jul 23, 2020

13849270 - (D) (P.T.A.B. Jul. 23, 2020)

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.
13/849,270 03/22/2013 Yaxun Tang 2012EM137 6541
34477 7590 07/23/2020
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
LUU, CUONG V
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAXUN TANG, SUNWOONG LEE, ANATOLY BAUMSTEIN,
and DAVID L. HINKLEY
Appeal 2019-003014
Application 13/849,270
Technology Center 2100
Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and
LINZY T. McCARTNEY, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1, 2, 5–8, 10–12, and 25–29. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as ExxonMobil Upstream
Research Company. Appeal Brief 4, filed November 5, 2018 (Appeal Br.).
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BACKGROUND
This patent application concerns “a method for inverting the full
wavefield of seismic data to infer a physical properties model of the
subsurface.” Specification ¶ 2, filed March 22, 2013 (Spec.). Claim 1
illustrates the claimed subject matter:
1. A computer-implemented method for updating a physical
properties model of a subsurface region in iterative inversion of
seismic data using a gradient of a cost function that compares the
seismic data to model-simulated data, said method comprising,
in one or more iteration cycles:
decomposing, with a computer, the gradient by
a) decomposing forward-in-time-propagated source
wavefield into more than one component based on spatial
propagation directions at every time step without decomposing a
backward-in-time-propagated data-residual wavefield, and then
correlating the decomposed forward-in-time-propagated source
wavefield with the backward-in-time-propagated data-residual
wavefield, or
b) decomposing backward-in-time-propagated data-
residual wavefield into more than one component based on
spatial propagation directions at every time step without
decomposing a forward-in-time-propagated source wavefield,
and then correlating the forward-in-time-propagated source
wavefield with the decomposed backward-in-time-propagated
data-residual wavefield, or
c) decomposing both a forward-in-time-propagated source
and a backward-in-time- propagated data-residual wavefields
into more than two components based on spatial propagation
directions at every time step, respectively, and then correlating
the decomposed forward-in-time-propagated source and
decomposed backward-in-time-propagated data-residual
wavefields;
unequally weighting the decomposed components of the
gradient;
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recombining the weighted components of the gradient to
obtain a modified gradient; and
updating the physical properties model with the modified
gradient,
wherein the gradient is decomposed into gradient
components that have shorter wavelengths and components that
have longer wavelengths, based on the spatial propagation
directions of the forward-in-time-propagated source wavefield
and the backward-in-time-propagated data-residual wavefield,
and
wherein in response to the seismic data being lacking in
low temporal frequencies, the weighting enhances the gradient
component that has longer wavelengths relative to the gradient
component that has shorter wavelengths.
Response to Notification of Non-Compliant Appeal Brief 3–4, filed
December 7, 2018 (Claims App’x).
REJECTION
Claims 35 U.S.C. § References/Basis
1, 2, 5–8, 10–12,
25–29 101 Eligibility
DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments, and Appellant has not persuaded us that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 2–6 of the Final Office Action mailed
June 6, 2018 (Final Act.), and pages 3–7 of the Examiner’s Answer mailed
January 8, 2019 (Ans.).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
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useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. 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)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate (1) whether the
claim recites subject matter that falls within one of the abstract idea
categories identified in the Revised Guidance, and if so, (2) whether the
claim fails to integrate the recited abstract idea into a practical application.
See Revised Guidance, 84 Fed. Reg. at 51, 54; see also USPTO, October
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2019 Update: Subject Matter Eligibility at 1–2, 10–15,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“October SME Update”) (providing additional guidance on determining
whether a claim recites a judicial exception and integrates a judicial
exception into a practical application). If the claim is directed to an abstract
idea, as noted above, we then determine whether the claim has an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
Appellant argues claims 1, 2, 5–8, 10–12, and 25–28 together, so as
permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for these
claims based on claim 1. Appellant presents a separate argument for
dependent claim 29. We address claims 1 and 29 in turn.
Claim 1
Directed To
The Revised Guidance identifies three categories of abstract ideas:
“mathematical concepts,” “mental processes,” and “certain methods of
organizing human activity.” Revised Guidance, 84 Fed. Reg. at 52. The
Examiner determined that claim 1 recites subject matter that falls into the
mathematical concepts and mental processes categories of abstract ideas. See
Final Act. 4 (determining that claim 1 is analogous to the patent-ineligible
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claims in Digitech Image Technologies, LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014) and Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); Revised Guidance, 84 Fed.
Reg. at 52 n.12 (categorizing the claims in Digitech as claims that recite
mathematical concepts); October SME Update at 4 n.16 (same), 7
(explaining that the claims in Electric Power Group are examples of claims
that recite mental processes).
We agree. Claim 1 recites a method that (1) decomposes a gradient in
one of three ways, (2) unequally weights the decomposed components of the
gradient, (3) recombines the weighted components of the gradient to obtain a
modified gradient, and (4) updates a physical properties model with the
modified gradient. See Claims App’x 3. The method requires that (5) the
gradient is decomposed into gradient components that have shorter
wavelengths and components that have longer wavelengths based on the
spatial propagation directions of the forward-in-time-propagated source
wavefield and the backward-in-time-propagated data-residual wavefield. See
Claims App’x 3. The method also requires that (6) in response to seismic
data being lacking in low temporal frequencies, the weighting enhances the
gradient component that has longer wavelengths relative to the gradient
component that has shorter wavelengths. See Claims App’x 3–4.
The written description makes clear that these claim limitations recite
a series of mathematical calculations. See, e.g., Spec. ¶¶ 19–32 (describing
the mathematical calculations used to update model parameters). Claims that
recite mathematical calculations fall into the mathematical concepts category
of abstract ideas. See, e.g., Parker v. Flook, 437 U.S. 584, 595 (1978) (“[I]f
a claim is directed essentially to a method of calculating, using a
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mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory.” (quoting In re Richman, 563 F.2d 1026,
1030 (1977))); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) (determining that the claims at issue are directed to ineligible
subject matter because “[t]heir subject is nothing but a series of
mathematical calculations based on selected information and the
presentation of the results of those calculations”); October SME Update at
3–4 (explaining that a claim falls into the mathematical concepts category if
the claim recites mathematical relationships, formulas or equations, or
calculations).
As evident from the broad language of claim 1 and the accompanying
discussion about the claimed method in the written description, the
limitations recited in claim 1 encompass mathematical calculations that
people can perform in their minds or using pen and paper. See Claims App’x
3; see also, e.g., Spec. ¶¶ 19–32. Claim 1 thus also recites mental processes.
See, e.g., Elec. Power Grp., 830 F.3d at 1354 (“[W]e 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.”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) (determining that “unpatentable mental
processes are the subject matter of” a claim when the claim’s “method steps
can be performed in the human mind, or by a human using a pen and
paper”); Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
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processes category unless the claim cannot practically be performed in the
mind.”).
Appellant has not persuaded us otherwise. Appellant contends that the
Examiner improperly read Digitech and Electric Power Group “to
essentially hold that all claims that involve obtaining, organizing, and
manipulating information are directed to abstract ideas, no matter the level
of abstraction of the recited types of obtaining, organizing, and/or
manipulating information.” Appeal Br. 11. But the Examiner did not
determine that all claims that involve these concepts are directed to abstract
ideas. Rather, the Examiner determined that claim 1 recites abstract ideas
because the claim recites concepts that are analogous to the ineligible
concepts in these cases. See Final Act. 4; Ans. 4. Appellant has not shown
that this determination is erroneous. Like the claims in Digitech, claim 1
recites “a process that employs mathematical algorithms to manipulate
existing information to generate additional information” and thus “is not
patent eligible.” Digitech, 758 F.3d at 1351. And like the claims in Electric
Power Group, claim 1 recites “analyzing information . . . by mathematical
algorithms,” which the Federal Circuit has treated “as essentially mental
processes within the abstract-idea category.” Elec. Power Grp., 830 F.3d at
1354.
Because we determine that claim 1 recites abstract ideas, we next
consider whether claim 1 integrates the abstract ideas into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract ideas] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.”
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Revised Guidance, 84 Fed. Reg. at 55; see also October SME Update at 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October SME Update at 12.
The Examiner determined that claim 1 recites a single additional
element: a computer. See Final Act. 4. The Examiner determined that claim
1 does not amount to significantly more than the recited abstract ideas
because the claim simply uses the recited “computer as a tool to perform
generic computer functions,” which “amount[s] to no more than
implementing the abstract idea[s] with a [generic] computerized system.”
Ans. 5.
We agree. As determined by the Examiner, the sole additional element
recited in claim 1 is a computer. See Claims App’x 3–4. The written
description explains that the claimed invention is “performed using a
computer, i.e. the invention is computer implemented,” Spec. ¶ 42, but
provides no technical details about the computer. This description shows that
the computer is a generic computer component. See, e.g., Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017)
(“The claimed mobile interface is so lacking in implementation details that it
amounts to merely a generic component (software, hardware, or firmware)
that permits the performance of the abstract idea, i.e., to retrieve the user-
specific resources.”). The claimed method uses this generic computer
component as a tool to execute the recited abstract ideas. See Claims App’x
3–4. Using a generic computer component in this way does not integrate the
recited abstract ideas into a practical application. See, e.g., Alice, 573 U.S. at
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223 (explaining that “[s]tating an abstract idea while adding the words
‘apply it with a computer’” does not “impart patent eligibility”); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017)
(“The use and arrangement of conventional and generic computer
components recited in the claims—such as a database, user terminal, and
server—do not transform the claim, as a whole, into ‘significantly more’
than a claim to the abstract idea itself.”); see also Revised Guidance, 84 Fed.
Reg. at 55 (explaining that courts have identified claims that “merely
include[] instructions to implement an abstract idea on a computer, or
merely use[] a computer as a tool to perform an abstract idea” as examples
of claims that do not integrate a judicial exception into a practical
application). Thus, considering the additional element recited in claim 1
along with the limitations that recited an abstract idea, both individually and
as an ordered combination, we determine that claim 1 does not integrate the
recited abstract ideas into a practical application. Because claim 1 recites
abstract ideas and does not integrate the abstract ideas into a practical
application, the claim is directed to abstract ideas.
Appellant contends that claim 1 is directed to a practical application
(and thus patent eligible) because the claim “entail[s] use of an improved
(and specifically claimed) algorithm to generate an updated physical
properties model . . . in a way that improves technology.” Reply Brief 3,
filed March 6, 2019; see also Appeal Br. 15–19 (making similar arguments).
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Appellant argues that claim 1 is thus similar to the patent-eligible claims in
the Finjan,2 Enfish,3 McRO, 4 and Krebs5 decisions. See Appeal Br. 15–19.
We disagree. The claimed method uses a generic computer component
to perform a series of calculations that result in updated values for model
parameters. See, e.g., Spec. ¶¶ 19 (disclosing that, in an embodiment of the
claimed method, “processed gradients are then recombined to form a new
gradient to improve the long wavelength updates of the gradient”), 21–31
(describing the mathematical calculations used to update model parameters).
At most, this is an improvement to a mathematical concept or mental
process, not technology. Such an improvement does not integrate the recited
abstract ideas into a practical application of those ideas. See, e.g., Parker,
437 U.S. at 594–95 (determining that “a new and presumably better method
for calculating alarm limit values” is ineligible for patenting); SAP Am., 898
F.3d at 1170 (explaining that because “the claims here are legally equivalent
to . . . an advance in mathematical techniques in finance. . . . patent law does
not protect such claims, without more, no matter how groundbreaking the
advance”).
As to the decisions identified by Appellant, the decisions do not show
that claim 1 is patent eligible. In Finjan, the claimed method “employ[ed] a
new kind of file that enable[d] a computer security system to do things it
could not do before.” 879 F.3d at 1305. And in Enfish, the claims were

2 Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018).
3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
5 Ex Parte Krebs, Appeal No. 2017-006095, 2018 WL 915166 (PTAB Feb.
13, 2018).
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“directed to a specific improvement to the way computers operate, embodied
in the self-referential table.” 822 F.3d at 1336. Appellant has not shown that
the method recited in claim 1 changes the way computers function, let alone
enables them to do something new or specifically improves how they
operate.
Regarding McRO, there the claims at issue were “limited to rules with
specific characteristics” that “achieve[d] an improved technological result in
conventional industry practice.” 837 F.3d at 1313, 1316. Although Appellant
asserts that claim 1 is similarly specific, see Appeal Br. 11–12, claim 1 is
functional and result oriented in nature. The limitations in claim 1 broadly
recite what the claimed method achieves but does not meaningfully specify
how the claimed method achieves it. For example, claim 1 recites
decomposing certain wavefields based on spatial propagation directions but
does not spell out how the claimed method performs this step. See Claims
App’x 3. Nor does the claim specify how, for instance, the method
recombines weighted versions of these components into a gradient or
updates a model with the modified gradient. See Claims App’x 3. In any
case, as discussed above, the claim at most recites an improvement to a
mathematical concept or mental process, not “an improved technological
result in conventional industry practice,” McRO, 837 F.3d at 1316.
As for Krebs, Krebs is a non-precedential Board decision that issued
well before the Office released the Revised Guidance and the October SME
Update. See Krebs, 2018 WL 915166, *1–4. Krebs concerns a written
description and claims that are different from the written description and
claims at issue here. See Krebs, 2018 WL 915166, *1–4. Like the Federal
Circuit, “[w]e are not bound by” our “non-precedential decisions at all,
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much less ones to . . . different specifications[] or different claims. Each
panel must evaluate the claims presented to it.” Trading Techs. Int'l, Inc. v.
IBG LLC, 921 F.3d 1084, 1095 (Fed. Cir. 2019). We thus find Appellant’s
reliance on Krebs unpersuasive.
Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether the claim has additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
As discussed above, the only additional element recited in claim 1 is a
computer. See Claims App’x 3–4. As also discussed above, the written
description provides no technical details about the computer. This shows that
the computer is a conventional computer component. See, e.g., Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(“[A] patent need not teach, and preferably omits, what is well known in the
art.”); USPTO, Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
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sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Employing a conventional computer component to perform the recited
abstract ideas is not enough to provide an inventive concept. Alice, 573 U.S.
at 223 (explaining that “[s]tating an abstract idea while adding the words
‘apply it with a computer’” does not “impart patent eligibility”); Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020)
(“[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 Am., 898 F.3d at
1170)).6
Summary
For at least the above reasons, we agree with the Examiner that claim
1 is directed to abstract ideas and lacks an inventive concept. We thus
sustain the Examiner’s rejection of claim 1 under § 101.

6 Even if the step of “updating the physical properties model with the
modified gradient” did not form part of the identified abstract ideas, the step
would not make claim 1 patent eligible because the step involves routine,
insignificant extra-solution activity. See, e.g., Spec. ¶ 3 (discussing, in the
Background of the Invention section, updating model parameters); Appeal
Br. 6 (mapping the recited updating to paragraph 3 of the written
description); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014) (determining that adding steps “such as updating an activity log” did
not make a claim patent eligible because, among other things, “updating an
activity log represent insignificant ‘data-gathering steps,’ and thus add
nothing of practical significance to the underlying abstract idea” (citation
omitted)).

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Claim 29
Appellant contends that dependent claim 29 “further requires
displaying, with the computer, an image of a subsurface region generated
from the updated physical properties model” and thus is patent eligible.
Appeal Br. 19. But displaying the results of mathematical calculations does
not make a claim patent eligible. See, e.g., SAP Am., 898 F.3d at 1167 (“The
focus of the claims, as reflected in what is quoted above, is on selecting
certain information, analyzing it using mathematical techniques, and
reporting or displaying the results of the analysis. That is all abstract.”);
Elec. Power Grp., 830 F.3d at 1354 (“[W]e have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and
analysis.”). Appellant’s argument is thus unpersuasive. We therefore sustain
the Examiner’s rejection of dependent claim 29 under § 101.
CONCLUSION
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 5–8,
10–12, 25–
29
101 Eligibility
1, 2, 5–8,
10–12, 25–
29

No 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