Ex Parte Pan

Patent Trial and Appeal Board

Aug 29, 2017

13341973 (P.T.A.B. Aug. 29, 2017)

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.
13/341,973 12/31/2011 Naide Pan PGS-l 1-43US 5379
137491 7590 08/31/2017
OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
EXAMINER
BHAT, ADITYA S
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
joanne@olympicpatentworks.com
docketing@pgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAIDE PAN
Appeal 2016-008038
Application 13/341,9731
Technology Center 2800
Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the maintained final
rejection under 35 U.S.C. § 101 of claims 1-20 as directed to non-statutory
subject matter. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
The subject matter of the claims on appeal relates to computational
methods and systems for carrying out computations to characterize and/or
1 PGS Geophysical AS is identified as the real party in interest. Appeal
Br. 1.
Appeal 2016-008038
Application 13/341,973
image subsurface features. Specification filed December 31, 2011 (“Appeal
Br.”), Abstract.
Independent claims 1 and 20 are directed to systems. Independent
claim 10 is directed to a method. Claim 1, reproduced below, is
representative.
1. An exploration-seismology computer system that
extrapolates a first constant-depth wavefield for a first depth to
a second constant-depth wavefield for a second depth, the
exploration-seismology computer system comprising:
one or more processors;
one or more data-storage devices; and
an extrapolation routine, stored in one or more of the one
or more data-storage devices that extrapolates the first constant-
depth wavefield for the first depth to the second constant-depth
wavefield for the second depth by computing two second-
domain virtual complex-valued wavefields and propagating one
of the two second-domain virtual complex-valued wavefields
and that stores the second constant-depth wavefield for the
second depth in one or more of the one or more data-storage
devices.
Appeal Brief filed November 24, 2015 (“Appeal Br.”), 20.
DISCUSSION2
We have reviewed the ground of rejection set forth by the Examiner,
Appellant’s arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly in determining that the
claims do not comply with 35 U.S.C. § 101 for the reasons set forth by the
2 In this discussion, we refer to the Specification, the Final Office Action
dated June 30, 2015 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer issued June 22, 2016 (“Ans.”), and the Reply Brief filed August 22,
2016 (“Reply Br.”).
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Application 13/341,973
Examiner in the Final Office Action and the Examiner’s Answer. We add
the following primarily for emphasis.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt 7, 134 S. Ct.
2347, 2354 (2014). In Alice, the Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1300 (2012), in which it is first determined whether
the claims at issue are directed to one of those patent-ineligible concepts and
then, if they are, it is then determined whether there are additional elements
that “transform the nature of the claim” into a patent-eligible application of
the otherwise ineligible concepts. Alice, 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1297). Claims directed to, or reciting, systems are also
ineligible under § 101 if the hardware recited by the claims add nothing of
substance to the underlying abstract idea. Alice, 134 S. Ct. at 2360.
The Examiner determines the claims are directed to non-statutory
subject matter because “[t]he extrapolation routine and the iterative routine
is [sic] merely an abstract idea[]” and that the processor and data storage
(claims 1 and 20) and “the storing step” (claim 10) do not transform the
claims into patent-eligible applications of the abstract idea. Final Act. 3;
Ans. 3.
Appellant contends that the Examiner failed both to properly apply the
two-step test from Alice and to undertake the requisite analysis for a prima
facie case. Maintaining that the Examiner’s rejection is grounded on an
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incorrect interpretation of Alice, Appellant further contends that the claimed
subject matter is patent-eligible, arguing that there is no possibility of pre­
emption, that it improves an existing technological process, that it is more
efficient than the prior art, and that it includes physical components. See
generally Appeal Br.; Reply Br.
Regarding the test applied by the Examiner, Appellant contends that
the Examiner is applying a two step test—first asking whether the claims are
directed to a process, machine, manufacture, or composition, and then
asking whether there is a judicial exception—that differs from the two step
test set forth in Alice. Appeal Br. 13-14.
Appellant’s position is not persuasive as the Examiner, regardless of
how the steps are denominated, applies the same test as Alice in that the
Examiner first determines that the claims are directed to an abstract idea, and
then determines that they do not include additional elements that would
transform the nature of the claim into a patent-eligible application of the
otherwise ineligible concepts. Final Act. 2-4. Regarding Appellant’s stated
presumption that the Examiner’s answer to “whether the claims are directed
to a process, machine, manufacture, or composition” is in the affirmative
(Appeal Br. 13-14), it is manifest that the Examiner determined that the
claims are directed to non-eligible subject matter despite nominally being
directed to systems or methods that include processors and data-storage
devices (Final Act. 2-4; Ans. 2-6).
Appellant contends that because Alice is grounded on avoiding pre­
emption of the building blocks of human ingenuity, i.e., laws of nature,
natural phenomena, and abstract ideas and the current claims “do not read on
the existing, conventional methods [of wavefield extrapolation],” and cannot
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“pre-empt the concept of two-dimensional wavefield extrapolation in even
the single field of exploration-seismology data processing,” the Examiner’s
§101 rejections must necessarily fail. Appeal Br. 4-7, 10-11, 16-17; see
also Reply Br. 4-5. Appellant emphasizes the process as disclosed in the
Specification (Appeal Br. 7-10), and that the process is identified as an
alternative to conventional methods (Appeal Br. 10, citing Spec. 154).
Appellant further maintains that because the claims do not cover previously
known and different systems and methods, the claims are not properly
rejected under § 101. Appeal Br. 7, 10-11; Reply Br. 4-5.
Appellant’s pre-emption argument does not alter our view that the
claims are properly rejected under § 101. First, the question of pre-emption
is not grounded on whether all methods for accomplishing the intended goal
are pre-empted, but rather on whether the claim pre-empts application of the
abstract idea embodied in the claim. It is, accordingly, of no import that the
claims do not read on existing, conventional methods. Second, the absence
of complete pre-emption does not demonstrate patent eligibility because
even though the principle of pre-emption is the basis for the judicial
exceptions to patentability, the concern is fully addressed and rendered moot
where the claim is determined to disclose patent ineligible subject matter
under the two-part framework described in Mayo and Alice. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
As explained in Alice, “the prohibition against patenting abstract ideas
cannot be circumvented by attempting to limit the use of [the idea] to a
particular technological environment.” Alice, 134 S. Ct. at 2538 (internal
citations and quotations omitted); see also Parker v. Flook, 437 U.S. 584,
590 (1978) (“The notion that post-solution activity, no matter how
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conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance.”).
Appellant contends that the claims are directed to an improvement to
an existing technological process and are, accordingly, directed to patent-
eligible subject matter. Appeal Br. 6-7, 11. Appellant relies on Diamond v.
Diehr, 450 U.S. 175 (1981), in which “a computer-implemented process for
curing rubber was found to be patent-eligible because the claims ‘improved
an existing technological process.’” Appeal Br. 6. Appellant further
contends that the claimed subject matter “provides significant computational
efficiencies . . . thus significantly improving the operational characteristics
of the computer system.” Reply Br. 3-4; see also Appeal Br. 10 (citing
Spec. 1 54).
Appellant’s arguments are unpersuasive of error. In contrast to the
claims in Diehr which recited steps applying the results of an algorithm, e.g.,
installing uncured rubber in the press, closing the press, and opening the
press, the instant claims do not recite any step applying the obtained
wavefields or information regarding structures of subsurface features and
materials. As to the contended improvement in efficiency, it is manifest that
any improved result is grounded in the algorithm itself and not in further
elements or their arrangement that adds significantly more so as to transform
the ineligible concept. In this regard, turning to our reviewing court’s
decisions, the instant claims on appeal are analogous to those determined
ineligible. See, e.g., Digitech Image Technologies LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
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Application 13/341,973
eligible.”); See also Amdocs (Israel) Limited v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016) (contrasting cases in which the claims were
determined to be eligible from those that were ineligible). In Amdocs,
determining the claims were eligible, the court explained that the claims
were tied to a specific structure of various components and required those
components to operate in an unconventional manner to achieve an
improvement in computer functionality. Amdocs, 841 F.3d at 1300-1301.
On this record, we are apprised of no such ordering or relationship between
the recited processors and/or data-storage devices that is unconventional.
Further, rather than improving computer efficiency, the mathematical
algorithm is merely less demanding of computer resources than the
conventional alternative, which is, in itself, not sufficient for patent
eligibility as it nonetheless is still merely a process manipulating existing
information to generate additional information.
Appellant contends that the subject matter nominally directed to a
system is patentable because the claims are directed to a machine. Appeal
Br. 11-12 (citing claim 1). Regarding claim 10, directed to a method,
Appellant argues that “[processors and data-storage devices are not ‘merely
a field of use,’ . . . [and that] ‘storing the second constant-depth wavefield
. . . in one or more data-storage devices’ is not an extra-solution activity that
is not central to the purpose of the method.” Appeal Br. 15. Appellant also
argues that the Examiner’s “classification of the subject matter of the current
claims as ‘data manipulation’ is not supported by argument or analysis.”
Reply Br. 3.
Appellant’s arguments, in sum, are that the claims are directed to
more than the abstract idea of extrapolating a first constant-depth wavefield
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for a first depth to a second constant-depth wavefield for a second depth,
however, as explained above, an unpatentable principle is not transformed
into patentable subject matter by hardware that adds nothing of substance to
the underlying abstract idea. See Alice, 134 S. Ct. at 2355; see also
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”). Having considered the claims and the
Specification, including the unfounded assertion that a general-purpose
computer executing a computer program is a specialized computer system
(Spec. 162), we discern no basis for the required hardware being anything
other than a generic computer.
Further, Appellant argues that the Examiner erred because the
extrapolation of a two-dimensional wavefield requires processing of many
gigabytes of data using complex computational processes and cannot be
undertaken without using a computer. Appeal Br. 14-15, 17. Appellant also
argues that the Examiner has failed to understand the current application
and, accordingly, misapprehends the purpose of the claims and the context
for the claimed system. Appeal Br. 16-18.
Appellant’s argument grounded on the requirement for a computer is
not persuasive of harmful error because the inability to undertake the
calculations without a computer is not dispositive. Electric Power Group,
LLCv. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[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.” (Emphasis added)). Regarding the
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purpose of the claims and context for the claimed system, on this record,
Appellant fails to identify how the purpose or context transforms the process
such that it amounts to more than manipulation of existing information to
generate additional information, notwithstanding that particular information
may be subject to the manipulation to obtain information that can be used for
a particular purpose. Digitech, 758 F.3d at 1351.
Appellant further contests the conduct of examination, arguing that
the Examiner failed to examine the claims in accordance with the Manual of
Patent Examining Procedure (MPEP) (Appeal Br. 16-17) and that the
Examiner improperly relied on the MPEP and interim guidelines as to § 101
rather than on Alice (Reply Br. 2-3). However, for the reasons set forth
above, we are not persuaded the Examiner erred in the determination that the
claims did not comply with 35 U.S.C. § 101 for the reasons above.
Furthermore, the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, “together with
such information and references as may be useful in judging the propriety of
continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). This notice requirement has been met in the
Examiner finding the algorithm is an abstract idea and that the processor,
data storage, and storing step do not transform the claims into patent-eligible
applications.
On this record, we sustain the Examiner’s rejection of the claims
under 35 U.S.C. § 101.
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DECISION
The Examiner’s decision rejecting claims 1-20 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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