Ex Parte Barnes

Board of Patent Appeals and Interferences

Jan 22, 2009

11017450 (B.P.A.I. Jan. 22, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE 7
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BEFORE THE BOARD OF PATENT APPEALS 10
AND INTERFERENCES 11
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Ex parte ARTHUR E. BARNES 14
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Appeal 2007-4114 17
Application 11/017,450 18
Technology Center 3600 19
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Decided: January 22, 2009 22
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and 25
FRED A. SILVERBERG, Administrative Patent Judges. 26
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SILVERBERG, Administrative Patent Judge. 28
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DECISION ON APPEAL 31
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STATEMENT OF THE CASE 33
Appellant appeals under 35 U.S.C. § 134 (2002) from a Final Office 34
Action of claims 1-18 and 30-34. We have jurisdiction under 35 U.S.C. 35
§ 6(b) (2002). 36
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SUMMARY OF DECISION 1
We REVERSE and ENTER A NEW GROUND OF REJECTION 2
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). 3
THE INVENTION 4
The Appellant’s claimed invention is directed to a method for 5
identifying faults in a seismic data volume (Spec.5;para. [0009]). Claims 1 6
and 30, reproduced below, are representative of the subject matter on appeal. 7
1. A fault identification method that comprises: obtaining 8
seismic data; and for each of multiple positions of an analysis 9
window in the seismic data, determining a planarity value for 10
discontinuities in the analysis window. 11
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30. A fault identification method that comprises: 13
determining discontinuity values from seismic data; and 14
applying principal component analysis to the discontinuity 15
values to identify faults. 16
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THE REJECTIONS 18
The Examiner relies upon the following as evidence of 19
unpatentability: 20
Gersztenkorn and Mafurt, Eigenstructure-based coherence computations as 21
an aid to 3-D structural and stratigraphic mapping, 64 Geophysics No. 5 at 22
1468-1479 (1999) (hereinafter “Gersztenkorn”). 23
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Tingdahl and Hemstra, Estimating fault-attribute orientation with gradient 25
analysis, principal component analysis and the localized Hough-transform, 26
73rd Annual Meeting, Society of Exploration Geophysicists, Expanded 27
Abstracts, 358-361 (2003) (hereinafter “Tingdahl”). 28
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Marfurt, Coherency calculations in the presence of structural dip, 64 30
Geiphysics No. 1 at 104-111 (1999) (hereinafter “Marfurt”). 31
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The following rejections are before us for review: 1
1. Claims 1, 13-18 and 30-34 are rejected under 35 U.S.C. § 102(b) 2
(2002) as being as being anticipated by Gersztenkorn. 3
2. Claims 1, 13, 30 and 34 are rejected under 35 U.S.C. § 102(a) (2002) 4
as being anticipated by Tingdahl. 5
3. Claims 2-5 are rejected under 35 U.S.C. § 103(a) (2004) as being 6
unpatentable over Gersztenkorn. 7
4. Claims 6-12 are rejected under 35 U.S.C. § 103(a) (2004) as being 8
unpatentable over Gersztenkorn in view of Marfurt. 9
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ISSUE 11
The issue before us is whether the Appellant has shown that the 12
Examiner erred in rejecting claims 1-5, 13-18 and 30-34 over Gersztenkorn; 13
claims 1, 13, 30 and 34 over Tingdahl; and claims 6-12 over Gersztenkorn in 14
view of Marfurt. The issue turns on whether Gersztenkorn, Tingdahl and 15
Marfurt (“the cited art”) fail to teach or suggest every claim limitation. 16
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FINDINGS OF FACT 18
We find that the following enumerated findings are supported by at 19
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 20
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 21
proceedings before the Office). 22
1. The Appellant’s Specification discloses systems and methods for 23
filtering seismic discontinuity data to enhance those features in the 24
discontinuity data that have the geometrical characteristics of a 25
fault (Spec.7:para. [0012]). 26
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2. The Appellant’s Specification further discloses a fault 1
identification method that comprises obtaining seismic data 102; 2
for each of multiple positions of an analysis window in the seismic 3
data, determining a planarity value for discontinuities in the 4
analysis window (Spec.15:para. [0033]); said determining a 5
planarity value comprises determining a covariance matrix for 6
discontinuity data in the analysis window, finding eigenvalues for 7
the covariance matrix, and calculating a ratio between a smallest of 8
the eigenvalues and an eigenvalue average (Spec.15:paras. [0034], 9
[0035] and Spec.18:para. [0038]); for each of multiple positions of 10
an analysis window in the seismic data, determining a planarity 11
filter value from the planarity value using a planarity function that 12
ranges from zero to one (Spec.18:para. [0039]); and for each of 13
multiple positions of the analysis window in the seismic data, 14
determining a centrality value for discontinuity data in the analysis 15
window (Spec.17:para. [0036]). 16
3. The Appellant’s Specification still further discloses a fault 17
identification method that comprises determining discontinuity 18
values from seismic data; applying principal component analysis to 19
the discontinuity values to identify faults (Spec.22:para. [0034]), 20
and displaying identified faults in a time-slice view or a horizontal 21
slice view (Spec.22:para. [0050]). 22
4. Gersztenkorn discloses a fault identification method (Abstract, p. 23
1469, col. 1, ll. 1-16); wherein the method includes obtaining 24
seismic data (Abstract, pp. 1469-1470), and using coherence to 25
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determine faults (p. 1469, col. 1; p. 1470, cols. 1 and 2; and p. 1
1476, col. 1). 2
5. Gersztenkorn further discloses displaying identified faults in a 3
time-slice view (fig. 1). 4
6. Tingdahl discloses a fault identification method (p. 1); wherein the 5
method includes obtaining seismic data, and using coherence to 6
determine faults (p. 1, col. 1). 7
7. Tingdahl further discloses that the fault identification method 8
includes applying principal component analysis to identify faults 9
(pp. 1-3). 10
8. Marfurt discloses that using a covariance matrix and eigenvalues in 11
an analysis window can give information about the dip (verticality) 12
or discontinuity (pp. 105-107 and 110). 13
9. The ordinary meaning of the word “planarity” is defined as “of, 14
relating to, or lying in a plane.” Merriam-Webster’s Collegiate 15
Dictionary (10th ed. 1996). 16
10. The ordinary meaning of the word “centrality” is defined as “the 17
quality of the state of being central, central situation, and tendency 18
to remain in or at the center.” Merriam-Webster’s Collegiate 19
Dictionary (10th ed. 1996). 20
11. The ordinary meaning of the word “eigenvalue” is defined as “a 21
scalar associated with a given linear transformation of a vector 22
space and having the property that there is some nonzero vector 23
which when multiplied by the scalar is equal to the vector obtained 24
by letting the transformation operate on the vector; especially: a 25
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root of the characteristic equation of a matrix.” Merriam-1
Webster’s Collegiate Dictionary (10th ed. 1996). 2
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PRINCIPLES OF LAW 4
Anticipation is established only when a single prior art reference 5
discloses, expressly or under the principles of inherency, each and every 6
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys., 7
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no 8
difference between the claimed invention and the reference disclosure, as 9
viewed by a person of ordinary skill in the field of the invention. Scripps 10
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 11
1991). It is not necessary that the reference teach what the subject 12
application teaches, but only that the claim read on something disclosed in 13
the reference, i.e., that all of the limitations in the claim be found in or fully 14
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 15
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). 16
“Section 103 forbids issuance of a patent when ‘the differences 17
between the subject matter sought to be patented and the prior art are such 18
that the subject matter as a whole would have been obvious at the time the 19
invention was made to a person having ordinary skill in the art to which said 20
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. 21
Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis 22
of underlying factual determinations including (1) the scope and content of 23
the prior art, (2) any differences between the claimed subject matter and the 24
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 25
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 26
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(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these 1
questions might be reordered in any particular case, the [Graham] factors 2
continue to define the inquiry that controls.”) 3
In KSR, the Supreme Court stated that “[f]ollowing these principles 4
may be more difficult in other cases than it is here because the claimed 5
subject matter may involve more than the simple substitution of one known 6
element for another or the mere application of a known technique to a piece 7
of prior art ready for the improvement.” Id. at 1740. The Court explained: 8
Often, it will be necessary for a court to look to 9
interrelated teachings of multiple patents; the 10
effects of demands known to the design 11
community or present in the marketplace; and the 12
background knowledge possessed by a person 13
having ordinary skill in the art, all in order to 14
determine whether there was an apparent reason to 15
combine the known elements in the fashion 16
claimed by the patent at issue. 17
Id. at 1740-41. The Court noted that “[t]o facilitate review, this 18
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 19
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained 20
by mere conclusory statements; instead, there must be some articulated 21
reasoning with some rational underpinning to support the legal conclusion of 22
obviousness”)). However, “the analysis need not seek out precise teachings 23
directed to the specific subject matter of the challenged claim, for a court 24
can take account of the inferences and creative steps that a person of 25
ordinary skill in the art would employ.” Id. 26
When construing claim terminology in the United States Patent and 27
Trademark Office, claims are to be given their broadest reasonable 28
interpretation consistent with the Specification, reading claim language in 29
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light of the Specification as it would be interpreted by one of ordinary skill 1
in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2
2004). 3
Whether a claim is drawn to patent-eligible subject matter under §101 4
is a threshold inquiry, and any claim of an application failing the 5
requirements of §101 must be rejected even if it meets all of the other legal 6
requirements of patentability. In re Bilski, 88 USPQ2d 1385, 1388 (Fed. 7
Cir. 2008). 8
The Federal Circuit stated that if the effect of allowing of a claim 9
would be to allow the patentee to pre-empt substantially all uses of a 10
fundamental principle, the claim is not drawn to patent eligible subject 11
matter. Id. at 1390. 12
The Federal Circuit concluded that “ … [W]e … reaffirm that the 13
machine-or-transformation test, properly applied, is the governing test for 14
determining patent eligibility of a process under §101.” Id. at 1392. 15
The Federal Circuit stated that “insignificant postsolution activity” 16
will not transform an unpatentable principle in a patentable process. Id. at 17
1393. 18
The Federal Circuit further stated that the machine-or-transformation 19
test is as follows: “The machine-or-transformation test is a two-branched 20
inquiry; an applicant may show that a process claim satisfies §101 either by 21
showing that his claim is tied to a particular machine, or by showing that his 22
claim transforms an article.” Id. at 1396. 23
The Federal Circuit further stated that “adding a data-gathering step to 24
an algorithm is insufficient to convert that algorithm into a patent-eligible 25
process.” Id. at 1397. 26
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1
ANALYSIS 2
Rejection of claims 1, 13-18 and 30-34 under 35 U.S.C. 102(b) as being 3
as being anticipated by Gersztenkorn, claims 2-5 under 35 U.S.C. § 103(a) 4
as being unpatentable over Gersztenkorn, and claims 6-12 under 35 U.S.C. 5
§ 103(a) as being unpatentable over Gersztenkorn in view of Marfurt. 6
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Appellant provides a definition of planarity and contends that 8
Gersztenkorn does not disclose determining a planarity value for 9
discontinuities in the analysis window as called for in claim 1 (Br. 12). 10
Upon review of the Specification, we find that the Specification does not 11
include the argued definition of the term planarity. Further, we find that the 12
Specification does not include any definition of the term planarity. As such, 13
we cannot look to the Specification for support for the definition of the term 14
planarity. Therefore, we give the term planarity its broadest reasonable 15
interpretation. See Am. Acad. of Sci. Tech. Ctr. at 1359. In giving the term 16
planarity its broadest reasonable interpretation we will use its ordinary and 17
customary meaning. The ordinary meaning of the word “planarity” is 18
defined as “of, relating to, or lying in a plane.” Merriam-Webster’s 19
Collegiate Dictionary (10th ed. 1996) (Fact 9). We find that claim 1 calls 20
for determining a planarity value for discontinuities in the analysis window. 21
However, Gersztenkorn neither mentions the term planar nor discloses any 22
determining of planarity values. We do not agree with the Examiner’s 23
analysis (Ans. 11) that since Gersztenkorn is determining values that are 24
associated with planar events in some way, these values may be broadly 25
interpreted as planarity values. Therefore, we conclude that Gersztenkorn 26
does not disclose determining a planarity value for discontinuities in the 27
analysis window as called for in claim 1 and claims 2-18 depending from 28
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claim 1. Nor does the Examiner provide any reason with rational 1
underpinning to explain why it would have been obvious to provide this 2
feature in Gersztenkorn or rely on any teaching in Marfurt that would 3
remedy this deficiency in Gersztenkorn so as to support a conclusion of 4
obviousness of the subject matter of claims 2-12. 5
Appellant contends that Gersztenkorn does not disclose determining 6
discontinuity values from seismic data and applying principal component 7
analysis to the discontinuity values to identify faults as called for in claim 30 8
(Br. 13-14). We do not agree with the Examiner’s analysis (Ans. 12-13) that 9
since in Gersztenkorn certain aspects of the seismic data contain 10
discontinuity data, discontinuity values are considered as being represented 11
by the data; and since principal component analysis is applied to the seismic 12
data, it is applied to the discontinuity values that the seismic data represent. 13
We conclude that Gersztenkorn does not disclose determining discontinuity 14
values from seismic data and applying principal component analysis to the 15
discontinuity values to identify faults as called for in claim 30 and claims 16
31-34 depending from claim 30. 17
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Rejection of claims 1, 13, 30, and 34 under 35 U.S.C. 102(a) as being as 19
being anticipated by Tingdahl. 20
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Appellant again argues a specific definition of planarity that we have 22
found not to be included in the specification and contends that Tingdahl does 23
not disclose determining a planarity value for discontinuities in the analysis 24
window as called for in claim 1 (Br. 14). For the reasons previously set 25
forth, we give the term planarity its broadest reasonable interpretation. See 26
Am. Acad. of Sci. Tech. Ctr. at 1359. In giving the term planarity its 27
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broadest reasonable interpretation we will again use its ordinary and 1
customary meaning. The ordinary meaning of the word “planarity” is 2
defined as “of, relating to, or lying in a plane.” Merriam-Webster’s 3
Collegiate Dictionary (10th ed. 1996) (Fact 9). We do not agree with the 4
Examiner’s analysis (Ans. 13-15) that since the claim limitations allow for a 5
broad interpretation, Tingdahl meets the limitations. We find that claim 1 6
calls for determining a planarity value for discontinuities in the analysis 7
window. However, Tingdahl neither mentions the term planar nor discloses 8
any determining of planarity values. Therefore, we conclude that Tingdahl 9
does not disclose determining a planarity value for discontinuities in the 10
analysis window as called for in claim 1 and claim 13 depending from claim 11
1. 12
Regarding claim 30, Appellant argues that Tingdahl does not disclose 13
applying principal component analysis to the results (Br. 15). We do not 14
agree with the Examiner’s analysis (Ans. 14-15) and conclude that Tingdahl 15
does not disclose the limitations as called for in claim 30 and claim 34 16
depending from claim 30. 17
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NEW GROUND 19
We enter a new ground of rejection of claims 1-18 and 30-34 pursuant 20
to 37 C.F.R. § 41.50(b). 21
35 U.S.C. 101 reads as follows: 22
Whoever invents or discovers any new and useful process, machine, 23
manufacture, or composition of matter, or any new and useful improvement 24
thereof, may obtain a patent therefor, subject to the conditions and 25
requirements of this title. 26
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Claims 1-18 and 30-34 are rejected under 35 U.S.C. 101 because the 1
claimed invention is directed to non-statutory subject matter, because it is 2
not tied to a particular machine, or does not transform an article. That is, the 3
method as claimed does not transform any article to a different state or thing. 4
The Federal Circuit stated that the machine-or-transformation test is as 5
follows: “The machine-or-transformation test is a two-branched inquiry; an 6
applicant may show that a process claim satisfies §101 either by showing 7
that his claim is tied to a particular machine, or by showing that his claim 8
transforms an article.” See In re Bilski at 1396. Claims 1 and 30 are 9
reproduced in the Invention section (p. 2) of this Decision on Appeal. A 10
review of the claims reveals that they call for the gathering, analyzing and 11
displaying of data without any details as to how the data is gathered, 12
analyzed or displayed. In particular, claim 1 calls for the gathering and 13
analyzing of data. Claims 2-18, which depend from claim 1, additionally 14
call for the analyzing of data. Claim 30 calls for the analyzing of data. 15
Claims 31-34, which depend from claim 30, additionally call for the 16
displaying of data. As such, the claims neither specifically call for a 17
machine nor reference a machine. The adding of a data-gathering step to a 18
process claim (claims 1-18) is insufficient to convert a process into a patent-19
eligible process. See id. at 1397. A claim that is drawn only to the 20
analyzing of data (dependent claims 2-18 and independent claim 30) is a 21
claim that seeks to pre-empt the use of a fundamental principle. See id. at 22
1390. The displaying of the data (claims 31-34) without more (e.g., a 23
reference as to how and why it is displayed) is determined to be 24
“insignificant postsolution activity” and as such will not transform the 25
claimed method into a patentable method. See id. at 1393. Therefore, we 26
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find that the method as called for in claims 1-18 and 30-34 is not tied to a 1
machine. Further, as the claimed method contains physical steps (gathering, 2
analyzing and displaying) it does not involve transforming an article into a 3
different state or thing. Accordingly, the method as called for in claims 1-18 4
and 30-34 fails “the machine-or-transformation test.” 5
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CONCLUSION OF LAW 7
We conclude that the Appellant has shown that the Examiner erred in 8
rejecting claims 1, 13-18 and 30-34 under 35 U.S.C. § 102(b) as anticipated 9
by Gersztenkorn; claims 1, 13, 30 and 34 under 35 U.S.C. § 102(a) as being 10
anticipated by Tingdahl; claims 2-5 under 35 U.S.C. § 103(a) as being 11
unpatentable over Gersztenkorn; and claims 6-12 under 35 U.S.C. § 103(a) 12
as being unpatentable over Gersztenkorn in view of Marfurt; as “the cited 13
art” does not teach or suggest every claim limitation. 14
Pursuant to 37 C.F.R. 41.50(b), we enter a new ground of rejection of 15
claims 1-18 and 30-34 under 35 U.S.C. § 101 as being non-statutory subject 16
matter, as set forth above. 17
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DECISION 19
The decision of the Examiner to reject claims 1, 13-18 and 30-34 20
under 35 U.S.C. § 102(b) over Gersztenkorn; claims 1, 13, 30 and 34 under 21
35 U.S.C. § 102(b) over Tingdahl; claims 2-5 under 35 U.S.C. § 103(a) 22
(2004) over Gersztenkorn; and claims 6-12 under 35 U.S.C. § 103(a) over 23
Gersztenkorn in view of Marfurt is reversed. We enter a new ground of 24
rejection of claims 1-18 and 30-34 under 35 U.S.C. § 101. 25
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FINALITY OF DECISION 1
In addition to reversing the Examiner's rejection(s) of one or more 2
claims, this decision contains a new ground of rejection pursuant to 37 3
C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of 4
rejection pursuant to this paragraph shall not be considered final for judicial 5
review." 6
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 7
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 8
the following two options with respect to the new grounds of rejection to 9
avoid termination of the appeal as to the rejected claims: 10
(1) Reopen prosecution. Submit an appropriate 11
amendment of the claims so rejected or new evidence relating 12
to the claims so rejected, or both, and have the matter 13
reconsidered by the Examiner, in which event the proceeding 14
will be remanded to the Examiner. . . . 15
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(2) Request rehearing. Request that the proceeding be 17
reheard under § 41.52 by the Board upon the same record. . . . 18
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No time period for taking any subsequent action in connection with 20
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21
§ 1.136(a)(1)(iv) (2007). 22
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REVERSED; 37 C.F.R. § 41.50(b) 24
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CONLEY ROSE, P.C. 15
David A. Rose 16
P. O. BOX 3267 17
HOUSTON, TX 77253-3267 18