Ex Parte Higginbotham et al

Patent Trial and Appeal Board

Jul 12, 2018

13065032 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/065,032
114376 7590
Robert Moll
1306 Don Kirk Street
Los Altos, CA 94024
03/11/2011
07/12/2018
FIRST NAMED INVENTOR
Joseph H. Higginbotham
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.
HWH701 4778
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
MAIL DATE DELIVERY MODE
07/12/2018 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 JOSEPH H. HIGGINBOTHAM, MORGAN P. BROWN,
and COSMIN MECESANU
Appeal2017-011009
Application 13/065,032
Technology Center 2800
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 59--90. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify HWH APPS, LLC as the real party in interest. Appeal
Brief filed February 10, 2017 ("App. Br."), 2.
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Application 13/065,032
STATEMENT OF THE CASE
Appellants' invention is generally directed to methods and computer-
readable medium for determining seismic reflectivity attributes indicating
the presence of hydrocarbons in the earth. Spec. 7, ,r 3; independent claims
59, 62, 69, 78, 87, and 88.
Independent claim 59 illustrates the subject matter on appeal and is
reproduced below:
59. A method executed in a host including a processor
coupled to a memory of determining a reflectivity attribute
indicating presence of hydrocarbons in a subsurface rock
formation, comprising:
inputting data representing the amplitude information of
reflected seismic P-waves into the memory;
inputting a volume of P-wave velocity into the memory;
computing, by the processor, a volume of S-wave velocity
by using the P-wave velocity and the amplitude information
from the data representing reflected seismic P-waves, to
compute a volume of single-parameter bk in a single-
parameter mudrock line equation, wherein the single-
parameter mudrock line equation for S-wave velocity is
hyperbolic and independent of a value of rock porosity, and
takes a form:
lvi ,
v2 =b'.!:I . .2..~1 l S k r.r2 ~
\ rw }
' ··and
'
computing, by the processor, the reflectivity attribute
using the volume of S-wave velocity and the volume of P-wave
velocity, and the data representing the amplitude of reflected
seismic P-waves, wherein Vs is the S-wave velocity, Vp is
the P-wave velocity, V w is a velocity of sound in water, and bk
is an estimated value of the hyperbolic mudrock parameter.
App. Br. 47 (Claims Appendix) ( emphasis added).
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The Examiner sets forth the following rejections in the Final Office
Action entered August 2, 2016 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered June 27, 2017 ("Ans.")2 :
I. Claims 59--90 under 35 U.S.C. § 101 as directed to non-
statutory subject matter;
II. Claims 59-90 under 35 U.S.C. § 112, first paragraph for failing
to comply with the written description requirement;
III. Claims 59-903 under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that the Applicants regard as the invention; and
IV. Claims 69 and 78 under 35 U.S.C. § 103(a) as unpatentable
over Carrazzone et al. (US 5,583,825, issued December 10, 1996) in view of
Castagna et al., Relationships Between Compressional-Wave and Shear-
Wave Velocities in Elastic Silicate Rocks, 50 Geophysics 571-581 (1985).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, 4 we affirm the Examiner's rejection of
2 Contrary to Appellants' assertion that the claim objections set forth at
pages 2-3 of the Final Action are rejections subject to Board review (Reply
Br. 2-3), the objections are not within the jurisdiction of the Board because
they are reviewable by petition under 3 7 C.F .R. § 1.181, and we therefore do
not address them. Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010)
(precedential).
3 Although the Examiner does not include claims 87-90 in the heading for
this rejection in the Final Action (Final Act. 5), the Examiner explicitly
addresses these claims in the body of the rejection (Final Act. 7-8), and we
thus treat their omission from the heading as a harmless, inadvertent error.
4 We do not consider any new argument raised in Appellants' Reply Brief
that could have been raised in their Appeal Brief. 37 C.F.R.
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claims 59-90 under 35 U.S.C. § 101, rejection of claims 59-61, 65, 66, and
87-90 under 35 U.S.C. § 112, first paragraph for failing to comply with the
written description requirement, and rejection of claims 59-90 under
35 U.S.C. § 112, second paragraph, for the reasons set forth in the Final
Action, the Answer, and below. We reverse the Examiner's rejection of
claims 62---64, 67-86, and 90 under 35 U.S.C. § 112, first paragraph for
failing to comply with the written description requirement, and rejection of
claims 69 and 78 under 35 U.S.C. § 103(a), for the reasons set forth below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each issue Appellants
identify. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
Rejection I
Appellants argue claims 59-90 as a group. App. Br. 37--44.
Therefore, we select claim 59 as representative, and decide the appeal as to
Rejection I based on claim 59 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that claim 59 is directed to the abstract idea
of computing a volume of a single parameter bk, computing a volume of S-
wave velocity, and computing a reflectivity attribute, which the Examiner
§4I.37(c )(1 )(iv); 37 C.F.R. § 41.41 (b )(2) (arguments raised for the first time
in the Reply Brief that could have been raised in the Appeal Brief will not be
considered by the Board unless good cause is shown).
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determines corresponds to organizing information through mathematical
correlations using mental processes that could be transformed in the human
mind. Final Act. 8-11. The Examiner determines that the additional steps
and elements recited in claim 59 do not add significantly more to the abstract
idea. Final Act. 11; Ans. 18. Specifically, the Examiner determines that the
steps of inputting data representing the amplitude information of reflected
seismic P-waves into memory, and inputting a volume of P-wave velocity
into memory, are directed to insignificant extra-solution activities of data
gathering. Final Act. 11; Ans. 18 ( citing Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)). The
Examiner also determines that the recited memory and processor are routine
and conventional features known in the industry. Final Act. 11; Ans. 18.
The Examiner determines that the claimed subject matter is therefore
ineligible for patenting. Final Act. 11.
Appellants argue that the claims recite a technological solution that
overcomes a specific challenge with existing technology used for oil and gas
prospecting. App. Br. 40-43. Appellants contend that the existing
technology relies on an approximate method of converting the velocity of P-
wave propagation in the earth to the velocity of S-wave propagation based
on averaging well information from all over the world. Id. Appellants
contend that their invention improves upon the exiting technology by
allowing computation of an accurate and usable relation to find the seismic
S-wave velocity from the seismic P-wave velocity in areas where no well
information is available, and by allowing computation of a more accurate
relation in areas where well information is available. Id.
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Appellants further assert that the Examiner's determination that all but
claims 69 and 78 are novel and non-obvious "suggests we have claimed an
inventive concept." App. Br. 43--44.
The Court in Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347
(2014) identified a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under § 101. In
the first step, "[ w ]e must ... determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. Step two involves "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,"' and is more than "well-understood, routine,
conventional activit[y ]." Alice, 134 S. Ct. at 2355, 2359 (first alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72-73 (2012)).
Claim 59 recites steps directed to (1) inputting data into memory, and
(2) computing by a processor (A) a volume of a single parameter (bk) in a
single-parameter mudrock line equation, (B) a volume of S-wave velocity,
and (C) a reflectivity attribute. The computing steps, taken individually, are
directed to abstract ideas of manipulating or analyzing data ( amplitude
information of reflected seismic P-waves and P-wave velocity) to generate
additional data (a volume of S-wave velocity, a volume of single-parameter
bk, and the reflectivity attribute). Merely combining these steps as recited in
claim 59 fails to render the combined steps any less abstract. See Digitech
Image Techs., LLCv. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014) ("Without additional limitations, a process that employs
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mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible."); Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (abstract ideas include
collecting information and analyzing that information "by steps people go
through in their minds, or by mathematical algorithms"); Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("[W]e
continue to 'treat[] 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."' (second alteration in original)
(citation omitted)); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1340 (Fed. Cir. 2017) (organizing, displaying, and
manipulating data is an abstract idea).
As the Examiner correctly determines, the step of inputting data into
the memory of a processor is conventional and routine in the art, and this
step in claim 59 therefore does not constitute an inventive concept that
transforms the abstract ideas discussed above into a patent-eligible
application. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-
716 (Fed. Cir. 2014) (holding the claims insufficient to supply an inventive
concept because they did not "do significantly more than simply describe
[the] abstract method," but rather are simply "conventional steps, specified
at a high level of generality" (quoting Alice, 134 S. Ct. at 2357)).
Although Appellants argue that their invention improves upon
existing technology by allowing computation of an accurate and usable
relation to find the seismic S-wave velocity from the seismic P-wave
velocity, Appellants do not direct us to any factual evidence supporting this
conclusory assertion, such as data of record comparing Appellants' method
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to the "existing technology." App. Br. 37--44; In re Schulze, 346 F.2d 600,
602 (CCPA 1965) ("Argument in the brief does not take the place of
evidence in the record.").
In addition, although Appellants assert that the subject matter of claim
59 is directed to an inventive concept because the Examiner deems the
claimed subject matter to be novel and non-obvious, the Federal Circuit has
made clear that a "claim for a new abstract idea is still an abstract idea."
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
Therefore, Appellants' arguments are unpersuasive of reversible error
in the Examiner's rejection of claims 59--90 under 35 U.S.C. § 101, which
we accordingly sustain.
Rejection II
Although the Examiner includes claims 59--90 in the heading for this
rejection, the Examiner only addresses independent claims 59, 69, 78, 87,
and 88 in the body of the rejection, and does not address independent claim
62 or any of the claims depending from claim 62. Final Act. 4--5. We
accordingly do not sustain the Examiner's rejection of claim 62 and its
dependent claims (63, 64, 67, 68, and 90) under 35 U.S.C. § 112, first
paragraph for failing to comply with the written description requirement.
Claims 59--61, 65, 66, and 89
The Examiner finds that Appellants' original disclosure does not
describe "the single-parameter mud rock line equation for S-wave velocity is
... independent of the rock value porosity" as recited in independent claim
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59. 5 Final Act. 4. The Examiner finds that the single parameter mudrock
line equation for S-wave velocity is defined in the Specification as equation
(41), and finds that equation (41) indicates that S-wave velocity (Vs)
depends on bk. Ans. 2-3 ( citing Spec. 64 ). The Examiner finds that
equation (42) in the Specification indicates that bk depends on y, and
equation (32) in the Specification indicates that y depends on the bulk
density (p 1), which the Examiner finds corresponds to the rock porosity.
Ans. 3 (citing Spec. 50, 54, and 64). The Examiner determines that the
Specification thus indicates that the single parameter mudrock line equation
for S-wave velocity depends on a value of rock porosity. Ans. 3.
Appellants argue that page 63, paragraph 3 to page 66, paragraph 4 of
their Specification, Figures 35 and 36 of their application, and Castagna et
al., Rock Physics - The Link Between Rock Properties and AVO Response, in
Offset-Dependent Reflectivity - Theory and Practice of AVO Analysis,
Society of Exploration Geophysics ( 1993) ("Castagna"), 6 provide support
for the claim language at issue. App. Br. 23-24. Appellants contend that
Figure 36, which depicts a cross-plot of Vp and Vs, shows that bk is constant
for limestone when the porosity of the mineral is changing, as disclosed in
Castagna, demonstrating that bk is independent of porosity. Id.
However, as the Examiner points out, Appellants argue that the cited
portions of the Specification, Figures 35 and 36, and Castagna demonstrate
that bk (the hyperbolic parameter) is independent of porosity, but claim 59
requires the single parameter mudrock line equation for S-wave velocity to
be independent of a value of rock porosity. Ans. 4; In re Self, 671 F .2d
5 We note that independent claim 87 also includes this language.
6 Incorporated by reference into Appellants' Specification at page 66.
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1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset
because ... they are not based on limitations appearing in the claims.").
In addition, as discussed above, the Examiner finds that equations 41,
42, and 32 of Appellants' Specification indicate that the single parameter
mudrock line equation for S-wave velocity is dependent on rock porosity,
and Appellants do not dispute this finding. Reply Br. 3-7. Appellants'
arguments are therefore unpersuasive of reversible error in the Examiner's
rejection of claims 59-61, 65, 66, and 89 under 35 U.S.C. § 112, first
paragraph for failing to comply with the written description requirement,
which we accordingly sustain.
Claim 87
The Examiner finds that Appellants' original disclosure does not
describe "determining a reflectivity attribute indicating the presence of
hydrocarbons in a subsurface rock formation to determine placement of an
oil/gas well drilling rig" and "displaying the reflectivity attribute on a two-
dimensional, or three-dimensional grid map that represents the subsurface to
determine the placement of an oil/ gas well drilling rig and the well target
position including depth and lateral offset from the surface location of the
oil/gas well drilling rig," as recited in independent claim 87. Final Act. 5.
Appellants argue that page 32, paragraph 4 to page 33 paragraph 2 of
their Specification and Figures 17 A-17C of their application "show a
reflectivity attribute plotted on a two-dimensional map, which is a slice
through a three-dimensional map." App. Br. 29. Appellants argue that page
2, paragraph 2 of their Specification provides "[ s ]upport for the placement of
the drilling rig." Id.
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However, although Figures 17 A-17C may show a reflectivity
attribute plotted on a two-dimensional map as Appellants assert, we find no
disclosure of displaying the reflectivity attribute on a three-dimensional grid
map in the portions of the Specification identified by Appellants.
Accordingly, Appellants' arguments do not explain with a reasonable degree
of specificity how the disclosures found at pages 32-33 of the Specification
and Figures 17 A-17C demonstrate that Appellants were in possession of
"displaying the reflectivity attribute on a two-dimensional, or three-
dimensional grid map that represents the subsurface to determine the
placement of an oil/gas well drilling rig and the well target position
including depth and lateral offset from the surface location of the oil/gas
well drilling rig" at the time of filing. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563---64 (Fed. Cir. 1991) (To fulfill with written description
requirement "the applicant must ... convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention. The invention is, for purposes of the 'written description'
inquiry, whatever is now claimed."). Appellants' arguments are therefore
unpersuasive of reversible error in the Examiner's rejection of claim 87
under 35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement, which we accordingly sustain.
Claim 88
The Examiner finds that Appellants' original disclosure does not
describe "using amplitude information of reflected seismic P-waves to image
a seismic survey of reflected seismic waves" as recited in claim 88. Final
Act. 5.
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Appellants argue that "[t]he specification supports this language in
claim 88, for example, in using amplitude information of reflected seismic
P-waves as shown in Figure 15 to image a seismic survey of reflected
seismic waves as shown in Figures 17 A-17C." App. Br. 30.
However, as the Examiner correctly determines (Ans. 8), Appellants
do not identify any disclosure in the Specification describing how
information from Figure 15 is used to image a seismic survey as shown in
Figures 17 A-17C. Accordingly, Appellants' arguments do not explain with
a reasonable degree of specificity how Figures 15 and 17 A-17C demonstrate
that Appellants were in possession of "using amplitude information of
reflected seismic P-waves to image a seismic survey of reflected seismic
waves" at the time of filing. Vas-Cath, 935 F.2d at 1563---64. Appellants'
arguments are therefore unpersuasive of reversible error in the Examiner's
rejection of claim 88 under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement, which we accordingly
sustain.
Claims 69-86 and 88
The Examiner finds that Appellants' original disclosure does not
describe "bk is constant for a mineral with fluid filled pores and independent
of porosity, varying only from mineral to mineral" as recited in independent
claims 69, 78, and 88. Final Act. 4.
To fulfill the written description requirement, the original disclosure
does not have to describe claimed subject matter in haec verba. Vas-Cath,
935 F.2d at 1563---64; In re Wertheim, 541 F.2d 257,262 (CCPA 1976)
("The function of the description requirement is to ensure that the inventor
had possession, as of the filing date of the application relied on, of the
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specific subject matter later claimed by him; how the specification
accomplishes this is not material.").
As Appellants point out (App. Br. 25-26), the Specification explains
that a hyperbolic mudrock line is accurate for fitting limestone and dolomite
(Spec. 66), and Figure 3 6 illustrates a hyperbolic mudrock line fit for
limestone in which bk is a constant value of 831.7 mis. The Examiner does
not adequately explain why these disclosures would not reasonably convey
to those skilled in the art that Appellants had possession at the time of filing
of a method and non-transitory computer-readable medium in which "bk is
constant for a mineral with fluid filled pores and independent of porosity,
varying only from mineral to mineral." We accordingly do not sustain this
rejection of claims 69-86 and 88 under 35 U.S.C. § 112, first paragraph for
failing to comply with the written description requirement. However, as
discussed above, we sustain the Examiner's separate rejection of claim 88
under 35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement on other grounds.
Rejection III
Claims 59-61, 65, 66, and 89
The Examiner finds that "the amplitude information from the data
representing reflected seismic waves" used in the method of claim 59 to
transform S-wave velocity is not included in the recited mudrock line
equation for computing S-wave velocity, rendering claim 59 (and claims 60,
61, 65, 66, and 89, which depend from claim 59) indefinite. Final Act. 6.
Appellants argue that the method of claim 59 utilizes the amplitude
information of the reflected seismic P-waves in equation (42), which is set
forth in the Specification and not recited in claim 59, to compute bk, and
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then uses the computed value of bk in the mudrock line equation recited in
claim 59 to compute the S-wave velocity. App. Br. 31.
However, as the Examiner correctly points out (Ans. 9), while claims
must be interpreted in view of the Specification, limitations from the
Specification may not be read into the claims. Loctite Corp. v. Ultraseal
Ltd., 781 F.2d 861, 867 (Fed. Cir. 1985) ("Generally, particular limitations
or embodiments appearing in the specification will not be read into the
claims."); In re Priest, 582 F.2d 33, 37 (CCPA 1978) ("We have
consistently held that no 'applicant should have limitations of the
specifications read into a claim where no express statement of the limitation
is included in the claim."' ( quoting In re Prater, 415 F .2d 1393, 1405
(CCPA 1969))).
Appellants do not direct us to any disclosure in the Specification
unequivocally indicating that the method of claim 59 is limited to the use of
equation ( 42) to compute bk. App. Br. 31. Accordingly, although
Appellants' Specification describes utilizing equation (42) to compute bk
from, inter alia, the P-wave velocity (Spec. 64), this disclosure does not
limit the scope of claim 59. Therefore, one of ordinary skill in the art would
be uncertain as to the equations ( or other means) that could be used in the
method of claim 59 to compute bk in order to compute a volume of S-wave
velocity using the amplitude information from the data representing reflected
seismic P-waves, rendering the scope of the claim unclear. See, e.g., Amgen,
Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (a
claim is considered indefinite under 35 U.S.C. § 112, second paragraph, if it
does not reasonably apprise those skilled in the art of its scope).
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The Examiner further finds, in connection with inclusion of the
velocity of sound in water (V w) in the mudrock line equation recited in claim
59, that it is unclear if the water "is pure water or is in/from the subsurface
rock formation having a certain degree of salinity." Final Act. 6; Ans. 10
( citing Spec. 64 (stating that the velocity of sound in water varies
"depending on salinity, temperature, etc.")).
Appellants assert that "' [ w ]ater in the subsurface rock formation' is
not recited in claim 59 so it's irrelevant to claim 59." App. Br. 31.
However, Appellants do not address the basis for the Examiner's rejection.
Because claim 59 does not recite the type and/or condition (temperature,
salinity) of the water in which the velocity of sound is measured (unlike
claims 87 and 88 which recite "V w is the velocity of sound in formation salt
water local to the well"), one of ordinary skill in the art would be unable to
determine the appropriate value for the velocity of sound in water (V w) to
use in the mudrock line equation recited in claim 59, rendering the scope of
the claim unclear.
We accordingly sustain the Examiner's rejection of claims 59---61, 65,
66, and 89 under 35 U.S.C. § 112, second paragraph. 7
Claims 63, 73, and 82
The Examiner finds that "the relationship between A and 'amplitude
information from the data representing reflected seismic P-waves' is not
clearly recited" in claims 63, 73, and 82, and further finds that the
7 Because we affirm the Examiner's rejection of claim 59 under 35 U.S.C.
§ 112, second paragraph based on the first two grounds provided by the
Examiner for finding the claim indefinite (Final Act. 6), it is unnecessary for
us to reach the third ground articulated by the Examiner (id.).
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"relationship between B and 'amplitude information from the data
representing reflected seismic P-waves' is [also] not clearly recited" in
claims 63, 73, and 82. Final Act. 6.
Appellants argue that Figure 33 and page 55, paragraph 3 of the
specification state "the relationship between 'A' and 'B' and the 'amplitude
information from the data,"' rendering claims 60, 63, 73, and 82 definite.
App. Br. 33-34.
However, the portion of the Specification cited by Appellants
indicates that "Figure 33 illustrates a method of least-squares inversion to
determine volumes of A and B parameters." Appellants' arguments do not
adequately explain how this disclosure relating to volumes of A and B
parameters in combination with Figure 33 clarifies the relationship between
the A and B parameters and the amplitude information from the data
representing reflected seismic P-waves called into question by the Examiner.
Therefore, Appellants' arguments are insufficient to identify reversible error
in the Examiner's rejection of claims 63, 73, and 82 under 35 U.S.C. § 112,
second paragraph as being indefinite, which we accordingly sustain. Jung,
637 F.3d at 1365.
Claims 62-64, 67---88, and 90
The Examiner finds that it is unclear if the mudrock line equation
recited in independent claims 62, 87, and 88, or the "formula" recited in
independent claims 69 and 78, is used to determine/compute both bk and Vs.
Final Act. 6-7. The Examiner finds that if this is the case, independent
claims 62, 69, 78, 87, and 88 (and the claims depending therefrom (claims
63, 63, 67, 68, 70-77, 79-86, and 90)) are "indefinite because there are two
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implied unknowns (i.e., S-wave velocity, bk). Two unknowns cannot be
transformed/ computed using one equation." Id.
Appellants agree with the Examiner that two unknowns cannot be
computed using one equation, and argue that their method does not do so.
App. Br. 34--35. Appellants contend that instead, the method of claims 62,
69, 78, 87, and 88 uses amplitude information of the reflected seismic P-
waves in equation ( 42) described in the Specification, which is not recited in
the claims, to compute bk, and then uses the mudrock line equation or
formula recited in claims 62, 69, 78, 87, and 88 to compute the S-wave
velocity using the computed bk value. Id. Appellants assert that their
Specification explains that the single-parameter mudrock line equation needs
only one parameter-bk-to relate Vs to VP. App. Br. 36.
However, as discussed above, the description in Appellants'
Specification of utilizing equation (42) to compute bk may not be read into
claims 62, 69, 78, 87, and 88. Accordingly, one of ordinary skill in the art
would be uncertain as to the equations ( or other means) that could be used in
the method of claims 62, 69, 78, 87, and 88 to compute bk in order to
compute the S-wave velocity using the mudrock line equation recited in
claims 62, 87, and 88, or using the "formula" recited in claims 69 and 78.
Consequently, one of ordinary skill in the art would be unable to determine
the metes and bounds of claims 62, 69, 78, 87, and 88. We accordingly
sustain the Examiner's rejection of these claims under 35 U.S.C. § 112,
second paragraph. Having done so, it is unnecessary for us to reach the
additional grounds provided by the Examiner for rejecting claims 62, 87, and
88 under 35 U.S.C. § 112, second paragraph (Final Act. 6-7). Cf In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching obviousness
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after finding anticipation); In re Basel! Poliolefine, 547 F.3d 1371, 1379
(Fed. Cir. 2008) ("Having concluded that the Board properly affirmed the
rejection of claims 1-52 of the '687 patent based on obviousness-type
double patenting in view of the '987 patent, we need not address the
remaining issues raised by Basell regarding the§§ 102(b) and 103(a)
rejections, as well as the additional double patenting rejections."); Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (ITC having
decided a dispositive issue, there was no need for the Commission to decide
other issues decided by the presiding officer).
Claims 89 and 90
Claims 89 and 90 recite that "B is a seismic reflection amplitude
gradient, wherein B is a calibrated value for the amplitude gradient."
The Examiner determines that the recitation in claims 89 and 90 that
"B is a seismic reflection amplitude gradient" is inconsistent with the
recitation that "B is a calibrated value for the amplitude gradient." Final
Act. 8. The Examiner further determines that "the amplitude gradient" lacks
antecedent basis because it is unclear if "the amplitude gradient" refers to
the "seismic reflection amplitude gradient." Id. The Examiner determines
that if this is the case, "the claims are indefinite because 'B is a calibrated
value for B' is indefinite." Id.
However, as Appellants correctly argue, the Specification explicitly
defines "B" as the seismic reflection amplitude gradient, and describes
calibration of the B value. App. Br. 37 (citing Spec. 51, 61). The plain
language of claims 89 and 90--in view of the description provided in the
Specification-is sufficiently clear to allow one of ordinary skill in the art to
understand that the recitation of "B is a calibrated value for the amplitude
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gradient" refers to a calibrated value for the seismic reflection amplitude
gradient. "[T]he amplitude gradient" recited in claims 89 and 90 therefore
does not lack antecedent basis, and one of ordinary skill in the art would
reasonably be able to understand the scope and meaning of claims 89 and
90.
We accordingly do not sustain this rejection of claims 89 and 90 under
35 U.S.C. § 112, second paragraph. However, as discussed above, we
sustain the Examiner's rejection of claims 89 and 90 under 35 U.S.C. § 112,
second paragraph on other grounds.
Rejection IV
Independent claims 69 and 78 both recite "using amplitude
information of reflected seismic P-waves to determine a volume of
parameter bk required by a formula for computing a volume of S-wave
velocity Vs from a volume of a P-wave velocity Vp," and recite that "bk is
constant for a mineral with fluid filled pores and independent of porosity,
varying only from mineral to mineral."
The Examiner finds that Carrazzone discloses all of the features of
claims 69 and 78 except computing, by a processor, the volume of parameter
bk required by a formula for computing a volume of S-wave velocity Vs,
wherein bk is constant for a mineral with fluid-filled pores and independent
of porosity, varying only from mineral to mineral. Final Act. 12-13; Ans.
23.
The Examiner finds that Castagna discloses computing the density of
sandstone grains (Ps) using equation 5d, and discloses that the density of
sandstone grains (Ps) is required by equation 10 to determine Vs. Final Act.
13; Ans. 24--25. The Examiner interprets the "parameter bk" recited in
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claims 69 and 78 as "any" parameter, including the grain density (Ps)
disclosed in Castagna. Ans. 23. The Examiner finds that Castagna's
disclosure of computing the density of sandstone grains (Ps) using equation
5d, which is required by equation 10 to determine Vs, therefore corresponds
to determining a volume of a parameter bk required by a formula for
computing a volume of S-wave velocity Vs. Ans. 23-25. The Examiner
finds that "in Castagna, while the density of wet rock Pw depends on porosity
(see equation 5d) the density of grains, Ps, is constant and does not depend
on porosity." Ans. 24--25 (emphasis omitted). The Examiner concludes that
"it would have been obvious to a person having ordinary skill in the art at
the time the invention was made to provide Carrazzone ... with the
equations as disclosed by Castagna ... for the purposes of computing, by a
processor, a volume of parameter bk and a volume of S-wave velocity Vs."
Final Act. 13; Ans. 24.
However, as Appellants correctly argue (App. Br. 44--45), Castagna
discloses that the grain density described in the reference is dependent
upon-rather than independent of-porosity. Castagna 576-577.
Specifically, equation (5d) of Castagna indicates that the density of
sandstone grains (Ps) is dependent on the porosity (