Ex Parte Smith et al

Patent Trials and Appeals Board

May 22, 2019

14386192 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/386,192 09/18/2014 Richard Stuart Smith
11171 7590 05/24/2019
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404
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.
0336-443/099991 7254
EXAMINER
LE,JOHNH
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD STUART SMITH and
ALEXANDER PETER ANNAN 1
Appeal2018-006179
Application 14/3 86, 192
Technology Center 2800
Before CATHERINE Q. TIMM, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4, 5, and 10-26. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to "methods for conducting
geophysical surveys using electromagnetic fields and gradients," and to
associated systems and computer-readable media. E.g., Spec. l; Claims 1, 4,
1 The Appellant is the Applicant, FUGRO CANADA CORP., and the real
party in interest is identified as CGG SERVICES SA. App. Br. 2.
Appeal2018-006179
Application 14/3 86, 192
and 5. Claim 1 is reproduced below from page 19 ( Claims Appendix) of the
Appeal Brief:
1. A method for processing electromagnetic field measurements
from a survey of an underground target embedded in a
background material, the method comprising:
receiving the electromagnetic field measurements that are
indicative of the underground and the underground target;
applying at least one spatial derivative to the electromagnetic
field measurements to calculate an indicator, wherein the
indicator has a first value for a uniform portion of the
underground and the indicator has a second value, different from
the first value, for the underground target, such that
measurements associated with the underground target are
enhanced and measurements associated with a background
material or a primary electromagnetic field are suppressed; and
based on the first and second values of the indicator, identifying
a physical location of the underground target,
wherein the first value of the indicator is zero and the second
value of the indicator is non-zero.
ANALYSIS
Claims 1, 4, 5, and 10-26 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. The Appellant focuses on
claim 1 but provides additional discussion of claims 4 and 16. We address
claims 1, 4, and 16 below. Claims 5, 10-15, 17, and 18 will stand or fall
with claim 1, and claims 19-26 will stand or fall with claim 4. See
37 C.F.R. § 4I.37(c)(l)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
2
Appeal2018-006179
Application 14/3 86, 192
Action, and in the Examiner's Answer. See generally Final Act. 2-12;
Ans. 2-9.
Claim 1. Determining whether a claimed invention is directed to
patent-eligible subject matter is a two-step process that requires
(1) evaluating whether the claim is "directed to" a patent-ineligible concept,
i.e., a law of nature, natural phenomenon, or abstract idea; and, if so,
(2) determining whether the claim's elements, considered both individually
and as an ordered combination, transform the nature of the claim into a
patent-eligible application. See Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216-18 (2014).
As to Alice step 1, the Examiner determines that claim 1 is directed to
the abstract ideas of ( 1) collecting, analyzing, and displaying information,
(2) mathematical relationships or formulas, and (3) "computer functions of
receiving, applying, and identifying." Final Act. 3--4.
As to Alice step 2, the Examiner determines:
The claim( s) does/ do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional elements (i.e., applying at least
one spatial derivative to the electromagnetic field measurements
to calculate an indicator, wherein the indicator has a first value
for a uniform portion of the underground and the indicator has a
second value, different from the first value, for the underground
target) are recited at a high level of generality, necessary, routine,
or conventional to facilitate the application of the abstract idea.
The final step "based on the first and second values of the
indicator, identifying a physical location of the underground
target, wherein the first value of the indicator is zero and the
second value of the indicator is non-zero" does not show any
tangible result in the real world that to lean towards significantly
more. There is no indication that the combination of elements
improves the functioning of a computer or improves any other
3
Appeal2018-006179
Application 14/3 86, 192
technology that import into the claim. The claim is not patent
eligible.
Final Act. 4--5.
The Appellant argues that the rejected claims are not directed to an
abstract idea because the claims are not similar to the claims in several cases
that the Federal Circuit or Supreme Court has found to recite ineligible
subject matter. App. Br. 5-10. The Appellant also argues that, even if
directed to an abstract idea, the claims "recite additional elements that add
significantly more" and "improve an existing technological process." Id. at
11-17.
Legal Framework
In determining whether a claim falls within a category excluded from
eligible subject matter, our inquiry focuses on the Supreme Court's two-step
framework described in Mayo and Alice, set forth above. Alice, 573 U.S. at
217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75-77 (2012)).
In accordance with that framework, we first determine what concept
the claim is "directed to." See Alice, 573 U.S. at 219. Concepts determined
to be abstract ideas, and thus patent ineligible, include mathematical
formulas. E.g., Parker v. Flook, 437 U.S. 584, 594--95 (1978). However,
not every claim that recites a mathematical formula is patent ineligible. In
Diamond v. Diehr, 450 U.S. 175, 191 (1981), the claim at issue recited a
mathematical formula, but the Supreme Court held that "[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also
id. at 191 ("We view respondents' claims as nothing more than a process for
4
Appeal2018-006179
Application 14/3 86, 192
molding rubber products and not as an attempt to patent a mathematical
formula."). The Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Flook and Gottschalk v. Benson, 409 U.S. 63, 69
(1972)); see also, e.g., id. at 187 ("It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
The USPTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
2018)).
5
Appeal2018-006179
Application 14/3 86, 192
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance 52, 55-56.
Judicial Exception (Guidance step (1))
Consistent with the Examiner's analysis, claim 1 applies mathematical
formulas (i.e., "applying at least one spatial derivative") to collected data
(i.e., "electromagnetic field measurements") to calculate values (i.e., "an
indicator"), and then uses the values to "identify[] a physical location" of an
underground target. The Specification provides mathematical formulas that
represent "spatial derivative operators" used in the "applying" step. Spec. 8.
The Examiner finds that the "identifying a physical location" step could also
"be simply a ... mathematical analysis." Final Act. 7. The Appellant does
not meaningfully contend that the claim does not recite mathematical
concepts, see App. Br. 10 (acknowledging that "the current claims us[e] a
mathematical operation" in the "applying at least one spatial derivative"
limitation), and instead, relevant to step (2) of the Guidance ( discussed
below), focuses on whether the claim is "directed to" those concepts, i.e.,
whether the claim integrates the abstract idea into a practical application, see
id. at 6-10.
Similar to the use of mathematical equations to determine Flook' s
alarm base, the Appellant's claims use mathematical equations in conducting
6
Appeal2018-006179
Application 14/3 86, 192
geophysical surveys using electromagnetic field measurements. See Flook,
437 U.S. at 585. In accordance with the Guidance, step (1), we determine
that claim 1 recites mathematical concepts and thus recites an abstract idea.
Integration into a Practical Application (Guidance step (2))
Turning to step (2) of the Guidance, we determine that claim 1, as a
whole, does not integrate the judicial exception into a practical application.
Integration into a practical application requires an additional element or a
combination of additional elements in the claim to "apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception." Guidance 53-54; see also id. at 55 (setting
forth exemplary considerations indicative that an additional element or
combination of elements may have integrated the judicial exception into a
practical application).
The Appellant's argument that the claims are not "directed to"
mathematical concepts or formulas is not persuasive. See App. Br. 6-10.
Contrary to the Appellant's argument, see id. at 9, claim 1 is similar in
nature to the claims at issue in Parker v. Flook, 437 U.S. 584 (1978), which
were held to be directed to ineligible subject matter. The claims in Flook
required (1) collecting data (i.e., "[d]etermining the present value of [a]
process variable" such as temperature), (2) subjecting the data to a
mathematical operation to "[ d]etermin[ e] a new alarm base," and (3) on the
basis of the result of that operation, making a determination. Flook, 437
U.S. at 585, 597.
Claim 1 similarly requires (1) collecting data ("receiving the
electromagnetic field measurements"), (2) subjecting the data to a
7
Appeal2018-006179
Application 14/3 86, 192
mathematical operation ("applying at least one spatial derivative to the
electromagnetic field measurements"), and (3) on the basis of the results of
that operation, making a determination ("based on the first and second
values of the indicator, identifying a physical location of the underground
target"). The fact that claim 1 itself does not expressly recite the spatial
derivative operator that is applied to the collected measurements, or identify
the precise mathematical relationship between the indicator values and the
physical location of the underground target, see App. Br. 9-10 ("The current
claims do not include any mathematical formula .... "), does not preclude
the claims from being directed to mathematical concepts. See Bancorp
Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266,
1280 (Fed. Cir. 2012) (holding ineligible claims that did not expressly recite
mathematical formulas and explaining, "[a]s the formulae in the
specification indicate, the determination of [ values recited by the claims],
and their subsequent manipulation, is a matter of mere mathematical
computation."); see also Spec. 8 (providing formula for "spatial derivative
operators").
The Appellant argues that Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017), indicates that the "current claims should be
found as NOT directed to abstract ideas." App. Br. 10. The Appellant's
argument appears to be that, because the claims in Thales involved
mathematical formulas but were nevertheless determined to be eligible under
§ 101, claim 1 in this case should likewise be determined to be eligible. See
id. That argument is not persuasive. The fact that certain claims ( of
unrelated patents) involving mathematical formulas have previously been
determined to recite eligible subject matter, of itself, does not establish that
8
Appeal2018-006179
Application 14/3 86, 192
the specific claims at issue here likewise recite eligible subject matter.
Critical to the eligibility determination in Thales was the recitation in the
claims of an "unconventional configuration of sensors." E.g., Thales, 850
F.3d at 1349. The Appellant identifies no "unconventional configuration of
sensors" or similar subject matter in claim 1 that might warrant reversal of
the Examiner's rejection based on Thales. On the contrary, the Specification
states that "[t]he system used for obtaining or measuring the response fields
can be a standard electromagnetic system using industry standard
transmitter and receiver technology." Spec. 12-13 (emphasis added).
We also do not agree with the Appellant that references in case law to
"building blocks of human ingenuity" are indicative of reversible error in
this case. See App. Br. 15. The Appellant's discussion appears to be an
argument that, because the claims do not completely preempt the calculation
of indicators, they are patent eligible. See id. at 15 ("[N]ote that [ claim 1]
does not claim calculating an indicator by itself. . . . [T]he claims do not try
to protect purely calculating an indicator .... "), 16 ("[T]hose who would
like to advance the 'human ingenuity' are not prevented from calculating
other indicators that do not use the spatial derivative of the electromagnetic
field measurements, as the claims do."). The mere fact that claim 1 may not
preempt all calculation of indicators fails to persuade us that claim 1
integrates the judicial exception into a practical application. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("[T]he absence of complete preemption does not demonstrate patent
eligibility."); see also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287 (Fed. Cir. 2018) (explaining that a claim does not become eligible
9
Appeal2018-006179
Application 14/3 86, 192
merely because "it recites limitations that render it narrower than the abstract
idea").
The Appellant also argues that the claimed method "improves an
existing technological process" because it "uses a gradient of the
electromagnetic fields for generating the image," whereas the "traditional
methods" use "either the electric field or the magnetic field for generating
the image." App. Br. 14. Claim 1, however, does not recite the generation
of an image. Nor does claim 1 specifically recite a "gradient," and the
Appellant has not established or asserted that the use of a "spatial
derivative" as recited by claim 1 is necessarily the same as the allegedly
inventive use of a "gradient." Additionally, we observe that the
Specification identifies a particular technical problem in "identify[ing]
conductive targets that are embedded in a conductive background material,"
see Spec. 1, but claim 1 does not appear to be limited to that problem.
Thus, even were we to agree that the Appellant describes an
improvement to an existing technological process in the Appeal Brief or in
the Specification, it is unclear on the record before us how that specific
improvement is reflected in claim 1. Rather, claim 1 appears to be broader
in scope than any improvement that the Appellant identifies in the Appeal
Brief or in the Specification. Cf Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1149 (Fed. Cir. 2016) ("While Synopsys may be correct that
the inventions of the Gregory Patents were intended to be used in
conjunction with computer-based design tools, the Asserted Claims are not
confined to that conception. The § 101 inquiry must focus on the language
of the Asserted Claims themselves."); cf also Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)
10
Appeal2018-006179
Application 14/3 86, 192
( admonishing that "the important inquiry for a § 101 analysis is to look to
the claim"); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus here on
whether the claims of the asserted patents fall within the excluded category
of abstract ideas.").
We are also not persuaded that In re Abele, 684 F.2d 902 (CCPA
1982), supports the Appellant's position that the claimed subject matter
integrates the judicial exception into a practical application. See App.
Br. 11-12. In In re Bilski, 545 F.3d 943, 962---63 (Fed Cir. 2008), aff'd sub
nom. Bilski v. Kappas, 561 U.S. 593 (2010), the Federal Circuit discussed
Abele and explained that "the transformation of that raw data into a
particular visual depiction of a physical object on a display was sufficient to
render that more narrowly-claimed process patent-eligible" ( emphasis
added). Contrary to the Appellant's suggestion, see App. Br. 12, the fact
that data must be generated using conventional elements such as transmitters
and receivers before a calculation can be performed does not, of itself,
indicate a practical application. The Appellant does not identify any
"transformation" that claim 1 implicates, see Bilski, 545 F.3d at 963,
sufficient to integrate the judicial exception into a practical application.
We are not persuaded that claim 1 integrates the judicial exception
into a practical application. Thus, claim 1 is directed to the recited abstract
idea.
Inventive Concept (Guidance steps (3) and (4))
Turning to steps (3) and (4) of the Guidance, the Appellant has not
shown error in the Examiner's determination that the limitations of claim 1
beyond the abstract idea itself are well understood, routine, and
11
Appeal2018-006179
Application 14/3 86, 192
conventional. See Final Act. 4, 8-9. The Appellant argues that "the claimed
'identifying a physical location of the underground target' 'based on the first
and second values of the indicator' calculated by 'applying at least one
spatial derivative of the electromagnetic field measurements' are not generic
computer functions" and "have NOT been found by courts to be generic
computer functions, routine or conventional." App. Br. 12. The "applying"
and "identifying" steps, however, are steps that the Examiner identifies as
encompassing mathematical concepts. See Final Act. 3, 7. "It has been
clear since Alice that a claimed invention's use of the ineligible concept to
which it is directed cannot supply the inventive concept that renders the
invention 'significantly more' than that ineligible concept." BSG Tech, 899
F.3d at 1290.
Even were we to not consider the "identifying" step as reciting
abstract subject matter, in the Appeal Brief and the Specification, the
Appellant uses phrases such as "traditional methods," App. Br. 14,
"[c]urrent industry practice," Spec. 9, and "well known approach," id., to
describe known methods of processing electromagnetic fields "for
generating the image," App. Br. 14. The Appellant does not argue that the
known, traditional methods fail to involve identifying a physical location of
an underground target. The Specification indicates that identification of
targets is a goal of "existing EM systems." E.g., Spec. 1-2. On this record,
we are not persuaded that any step of claim 1 beyond those encompassing
the abstract idea itself recites subject matter that is not well understood,
routine, and conventional.
12
Appeal2018-006179
Application 14/3 86, 192
In summary, we have carefully considered the Appellants' arguments
but are not persuaded of reversible error in the Examiner's rejection of
claim 1.
Claim 4. Independent claim 4 is similar to claim 1 ( our analysis of
which applies equally here) but recites a system, rather than a method, and
the system includes, inter alia, "a transmitter for generating a primary
electromagnetic field" and "one or more receivers for measuring the
response electromagnetic field measurements." Relevant to the arguments
discussed above concerning whether the claim elements are well understood,
routine, and conventional, the Appellant's only argument concerning claim 4
is that the Examiner "does not appear to give any deference to the claimed"
transmitter and receivers, "alleging they are recited at a high level of
generality, necessary, routine, or conventional to facilitate the application of
the abstract idea." App. Br. 13. The Appellant states: "Appellants
respectfully disagree as the transmitter and the receivers are not mere
facilitators of the indicator calculation, but a system for electromagnetic
probe of underground structures." Id.
That argument is not persuasive. As an initial matter, we observe that
the Appellant does not actually dispute the Examiner's findings that
transmitters and receivers are well understood, routine, and conventional
elements of geological survey systems. Even if transmitters and receivers
are "not mere facilitators of the indicator calculation," id., the record
supports the Examiner's determination that they are well understood,
routine, and conventional. See Final Act. 5. In that regard, and as set forth
above, the Specification describes "[c]urrent industry practice" and "[t]he
well known approach" for obtaining and interpreting electromagnetic
13
Appeal2018-006179
Application 14/3 86, 192
measurements. Spec. 8-9. It is unclear how electromagnetic measurements
could be obtained and understood without transmitters and receivers.
Indeed, the Specification states that "[t]he system used for obtaining or
measuring the response fields can be a standard electromagnetic system
using industry standard transmitter and receiver technology." Spec. 12-13
( emphasis added).
On the record before us, we are not persuaded that the transmitters
and receivers of claim 4 are not well understood, routine, and conventional,
or that they otherwise impart subject matter eligibility to claim 4.
The Appellant raises no other arguments specific to claim 4. We
affirm the Examiner's rejection of claim 4.
Claim 16. Claim 16 depends from claim 1 and further recites, inter
alia, "generating a plot of the indicator based on which the location of the
underground target is identified."
The entirety of the Appellant's argument concerning claim 16 is
reproduced below:
Unlike Flook' s claims, the current claims are not directed to a
mathematical formula for calculating some numbers, but identify
a physical location of an underground target. Appellants note
that one embodiment ( see claim 16) specifies that the location of
the underground target is identified based on a plot of the
indicator, i.e., associating locations with values of the indicator,
not bare numbers as in Flook. Thus, Flook' s decision is not
relevant to the claimed subject matter.
App. Br. 9. We understand the Appellant's position to be that, because
claim 16 recites the generation and use of a data plot, whereas the claims in
Parker v. Flook did not involve a data plot, Flook is irrelevant to the analysis
of claim 16.
14
Appeal2018-006179
Application 14/3 86, 192
That argument is not persuasive. As set forth above, at least the
"applying" step of claim 1 ( from which claim 16 depends) encompasses the
judicial exception of mathematical concepts, and claim 1 does not integrate
the judicial exception into a practical application. The Federal Circuit has
held that certain claims directed to, inter alia, displaying data (which is
presumably a purpose of the data plot recited in claim 16) encompass
abstract ideas. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1097-98 (Fed. Cir. 2016) ("the practices of collecting, analyzing, and
displaying data, with nothing more, are practices 'whose implicit exclusion
from § 101 undergirds the information-based category of abstract ideas'").
Additionally, the Appellant indicates that using data to generate images is
routine and conventional. E.g., App. Br. 14 (noting that "traditional methods
... for generating the image" are described on page 9 of the Specification);
see also Spec. 9 (describing "[c]urrent industry practice" and "[t]he well
known approach").
The Appellant's limited argument concerning claim 16 does not
persuade us that recitation of "generating a plot" precludes claim 16 from
being "directed to" an abstract idea. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections .... ").
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 4, 5, and 10-26
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
15