Ex Parte Aarre et al

Patent Trial and Appeal Board

Nov 20, 2018

14674585 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/674,585 03/31/2015
48879 7590 11/23/2018
SCHLUMBERGER INFORMATION SOLUTIONS
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
Victor Aarre
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IS14.8741-US-NP 9165
EXAMINER
MALZAHN, DAVID H
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
USDocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR AARRE and EDO HOEKSTRA
Appeal2018-004380
Application 14/674,585 1
Technology Center 2100
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies itself, Schlumberger Technology Corporation as the
real party in interest. App. Br. 3.
Appeal2018-004380
Application 14/674,585
THE INVENTION
The disclosed and claimed invention is directed to "decomposing a
signal." Spec. ,r 6. 2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
receiving seismic data obtained by a sensor in response to
a sound vibration generated by a source that reflects off of
horizons in a subterranean formation;
building a wavelet in a time domain using the seismic
data, wherein the wavelet includes a number of oscillations per
sampling unit, and wherein a length of the wavelet corresponds
to the number of oscillations;
time-shifting the wavelet;
scaling the wavelet after time-shifting the wavelet such
that an amplitude of the wavelet proximate to one or both ends
of the wavelet decay toward zero;
transforming the wavelet from the time domain into a
frequency domain; and
scaling the wavelet after transforming the wavelet into
the frequency domain such that a peak amplitude of the
wavelet, when transformed into the frequency domain, is
substantially unity.
2 We refer to the Specification filed Mar. 31, 2015 ("Spec."); Final Office
Action mailed Apr. 10, 2017 ("Final Act."); Appeal Brief filed Dec. 5, 2017
("App. Br."); Examiner's Answer mailed Feb. 2, 2018 ("Ans."); and Reply
Brief filed Mar. 21, 2018 ("Reply Br.").
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Application 14/674,585
REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more. Final Act. 2.
ANALYSIS
Section 101 Rejection
The Alice/Mayo Framework Governing Patent-Eligible Subject Matter
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites: "Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70-71 (2012). Although an abstract
idea, itself, is patent-ineligible, an application of the abstract idea may be
patent-eligible. Alice, 134 S. Ct. at 2355. Thus, we must 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." Id. ( citing Mayo, 566 U.S. at 79).
The claim must contain elements or a combination of elements that are
"sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [abstract idea] itself." Id. (citing Mayo, 566 U.S. at
79).
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The Supreme Court set forth a two-part "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Id. at
2355.
Id.
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. [Mayo,] 132
S. Ct., at 1296-1297. If so, we then ask, "[ w ]hat else is there in
the claims before us?" Id., at--, 132 S. Ct., at 1297. To
answer that question, we 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. Id., at--, 132 S.
Ct., at 1298, 1297. We have described step two of this analysis
as 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--, 132 S. Ct., at
1294.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
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determining whether claims are patent eligible under 35 U.S.C. § 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").
Under the second step of the Alice/Mayo framework, we examine the
claim limitations "more microscopically," Electric Power, 830 F.3d at 1354,
to determine whether they contain "additional features" sufficient to
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355, 2357 (quoting Mayo, 566 U.S. at 78). "Mere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea. Rather, the components must
involve more than performance of well-understood, routine, conventional
activit[ies] previously known to the industry." In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at
2359).
Claims 1-9 and 11-21
Abstract Idea
The Examiner concludes claim 1 is directed to "the abstract idea of
transforming sampled data to a wavelet, which is defined by mathematical
relationships." Final Act. 2. Specifically, the Examiner finds the claimed
"receiving seismic data" is a data gathering step, and the remaining claimed
steps "merely call for transforming the sampled data to a wavelet," which
"define how the mathematical defined algorithm are to be [sic] performed"
and are mathematical concepts. Final Act. 2-3; see also Ans. 5.
Appellant argues that the claimed invention is not "merely a
mathematical equation with a general-purpose computer added after-the-
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fact," and is instead "directed to a specific implementation of a solution to a
problem found in spectral decomposition of a signal." App. Br. 9 (citing
Enfzsh).
We are not persuaded by Appellant's arguments that the Examiner
erred. The Examiner identifies the abstract idea of using mathematical
relationships. Final Act. 2-3; see also Ans. 4--5. The steps in claim 1 can be
identified as gathering data (i.e., receiving seismic data), and using
mathematical formulas and correlations to organize the information (i.e.,
building a wavelet, time-shifting the wavelet, scaling the wavelet,
transforming the wavelet, and scaling the wavelet). See Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) ("claims an abstract idea because it describes a process of
organizing information through mathematical correlations"). Unlike in
Enfish, we agree with the Examiner's finding that the alleged improvements
are all "in the mathematical algorithm that performs the transformation and
not in the functioning of the computer itself." Ans. 4.
Accordingly, we agree with the Examiner that the claim 1 is directed
to an abstract idea.
Significantly More
The Examiner determines the claim 1 "does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception." Final Act. 2; see also id. at 3; Ans. 3-5. Specifically, the
Examiner finds the "use of generic computer components to transform
sampled data to a wavelet does not impose any meaningful limit on the
computer implementation of the abstract idea." Final Act. 3. According to
the Examiner, the combined claim elements do not improve the "functioning
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of a computer" or "any other technology," and "merely provide a
conventional computer implementation." Id.
Appellant argues claim 1 recites "more than simply calculating data
on a computer," but rather recites "concrete process steps to process real-
world data ( e.g., captured by a sensor) with a physical goal in mind." App.
Br. 11 ( citing Research Corp Techs. Inc. v. Microsoft Corp., 627 F .3d 859
(Fed. Cir. 2010)). Appellant further contends that the claimed combination
of elements "impose meaningful limits in that the mathematical operations
are applied to improve an existing technology [ (filtering/decomposing
seismic data)]." App. Br. 12. According to Appellant, the claimed
"receiving seismic data" step recites a sensor that "acts in concert with a
processor to enable the processor to filter/decompose the seismic data."
App. Br. 12 (citing Spec. ,r,r 40-41). Appellant argues the claimed invention
"solves the technological problem of filtering/decomposing seismic data to
determine a likelihood that hydrocarbons are present in the subterranean
formation," which is a process that "can be difficult to efficiently solve" but
the "claimed invention provides an unconventional technological solution."
App. Br. 13 ( citing Amdocs (Israel) Ltd. V. Openet Telecom., Inc., 841 F .3d
1288 (Fed. Cir. 2016)).
We are not persuaded by Appellant's arguments that the Examiner
erred. Although Appellant cites to the Specification to present an
application possible in the field of computer technology (App. Br. 13 (citing
Spec. ,r 78)), the present claims merely gather data (i.e., receiving seismic
data) and perform mathematical calculations (i.e., building a wavelet, time-
shifting the wavelet, scaling the wavelet, transforming the wavelet, and
scaling the wavelet). Unlike in Research Corp., the present claims are
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directed to building a scaled wavelet with a specific peak amplitude, but do
not otherwise "present[] functional and palpable applications in the field of
computer technology." See Research Corp., 627 F.3d at 868. We agree
with the Examiner's finding that the alleged improvements are all "in the
mathematical algorithm that performs the transformation and not in the
functioning of the computer itself." Ans. 4. We further agree with the
Examiner's finding that, in contrast to Amdocs, the present claims only add a
sensor, processors, memory system, and non-transitory computer-readable
medium, and that these additional elements are recited as performing generic
computer functions routinely used in computer applications. Ans. 5; see
also Final Act. 3.
Furthermore, Appellant's argument that the pending claims are patent
eligible because they are recite an "inventive concept" and are otherwise
novel and non-obvious (see Reply Br. 2 ( citing Finjan Inc. v. Blue Coat Sys.
Inc., 879 F.3d 1299 (Fed. Cir. 2018)); see also Reply Br. 3 (citing Trading
Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir.
2017)) is likewise not persuasive because it improperly conflates the
requirements for eligible subject matter (35 U.S.C. § 101) with the
independent requirements of novelty (35 U.S.C. § 102) and obviousness (35
U.S.C. § 103). Although the second step in the Alice framework is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness. Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. 66 at 78-79. Further, "under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
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for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369 (Fed. Cir. 2016).
Accordingly, we sustain the Examiner's rejection of claim 1 as being
directed to patent-ineligible subject matter, as well as commensurate
independent claims 11 and 20, and dependent claims 2-9, 12-19, and 21, not
separately argued.
Claim 10
Claim 10 recites "drilling a wellbore into a subterranean formation in
response to the wavelet indicating a likelihood of hydrocarbons in the
subterranean formation." App. Br. 19, Claims App. (emphasis added).
The Examiner concludes claim 10 is directed to an abstract idea. Ans.
4--5. According to the Examiner, the claimed additional step of "drilling a
wellbore" is an "insignificant post-solution activity." Ans. 4--5 (citing
Alice).
Appellant argues the Examiner erred in concluding claim 10 is
directed to an abstract idea. App. Br. 14; see also Reply Br. 3. Specifically,
Appellant argues drilling a wellbore in response to a wavelet indication, as
required by claim 10, is a "physical, real-world action that occurs in
response to (and based on) the wavelet that is produced in claim 1." App.
Br. 14. According to Appellant, claim 10 is "highly similar to the claims
considered by the Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981),
in that a physical machine/process is being controlled by a technique that
employs mathematical principles." Id.
Based on the current record, we are persuaded by Appellant's
arguments that the Examiner erred. Pursuant to Diehr, we must consider
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whether the "claim containing a mathematical formula implements or
applies that formula in a structure or process which, when considered as a
whole, is performing a function which the patent laws were designed to
protect." Diehr, 450 U.S. at 192. In Diehr, the claim satisfied the
requirements of 35 U.S.C. § 101 because they were not "an attempt to patent
a mathematical formula, but rather ... drawn to an industrial process for the
molding of rubber products." Id. at 192-193.
We agree with Appellant that claim 10 is "not directed to performing
mathematical operations on a computer alone," but rather "impose[ s]
meaningful limits in that the mathematical operations are used to improve an
existing technology (drilling a wellbore to find hydrocarbons)." App. Br.
14. Similar to the claims in Diehr, claim 10 applies the mathematical
formula (i.e., the wavelet produced from the received seismic data, time-
shifted, transformed, and scaled) in a process (i.e., drilling a wellbore ), and
drawn to a process of locating hydrocarbons in the subterranean formation.
The Examiner has not responded to Appellant's arguments comparing claim
10 to the claims in Diehr. The Examiner has not shown sufficiently that
claim 10, when the claim elements are considered individually and as an
ordered combination, is directed to an abstract idea.
As a result of our conclusion that the Examiner has not sufficiently
identified an abstract idea for claim 10, we do not need to consider the
additional elements of the claim limitations under the second step of the
Alice/ Mayo framework.
Accordingly, we do not sustain the Examiner's rejection that claim 10
is directed to patent-ineligible subject matter.
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DECISION
The Examiner's rejection of claims 1-9 and 11-21 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claim 10 under 35 U.S.C. § 101 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 4I.50(f).
AFFIRMED-IN-PART
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