Ex Parte Hegna et al

Patent Trial and Appeal Board

Apr 26, 2017

13483327 (P.T.A.B. Apr. 26, 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.
13/483,327 05/30/2012 Stian Hegna PGS-12-18US 4007
137491 7590 04/28/2017
OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
EXAMINER
CRAIG, DWIN M
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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 STIAN HEGNA and FABIEN JULLIARD
Appeal 2016-003010
Application 13/483,327
Technology Center 2100
Before JEAN R. HOMERE, AMBER L. HAGY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—23, which are all of the pending claims. (Claims
App’x.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under the provisions of 37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as PGS Geophysical AS.
(App. Br. 1.)
Appeal 2016-003010
Application 13/483,327
Introduction
Appellants’ application is directed to “marine seismic survey
techniques” used, for example, to obtain information about “valuable
mineral resources” that may be located in underwater, subterranean
formations. (Spec. 11.) These techniques include using acoustic sources to
generate sound waves. (Id.) Each source has an associated “near-field
signature and a far-field signature.” (Id. 127.) When multiple sources are
used in an array at the same time, sound waves from these sources may
impinge on each other. (See id. ]f 28.) Appellants’ Specification indicates
that it is, therefore, useful to calculate a “notional” source signature, which
“is an isolated near-field signature with the pressures created by other
neighboring source elements and by the reflections on the free surface
removed.” (Id. 132.) According to Appellants, their application describes
and claims “[mjethods and systems for computing notional source signatures
from modeled notional signatures and measured near-field signatures.”
(Abs.)
Exemplary Claim
Claims 1, 9, and 17 are independent. Claim 1, reproduced below with
the disputed limitation italicized, is exemplary of the claimed subject matter:
1. A method for computing notional source signatures to be
carried out by a computer system that includes one or more
processors and one or more data-storage devices, the method
comprising:
for each source element of an acoustic source:
computing a modeled near-field signature from
modeled notional source signatures, each modeled
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Application 13/483,327
notional source signature associated with a source
element of the acoustic source;
computing a near-field signature as a weighted
summation of a recorded near-field signature of the source
element and the modeled near-field signature; and
computing notional source signatures from the near­
field signatures.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Parkes US 2005/0259513 A1 Nov. 24, 2005
van Manen et al. US 2009/0043545 A1 Feb. 12, 2009 (“van Manen”)
Lippuner et al. US 2012/0222465 Al Sept. 6, 2012 (“Lippuner”)
REJECTIONS
Claims 1—5, 7—13, 15—21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Parkes and van Manen. (Final Act. 7—
11.)
Claims 6, 14, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parkes, van Manen, and Lippuner. (Final Act. 11—12.)
ISSUE2
Whether the Examiner erred in finding Parkes teaches or suggests
“computing a modeled near-field signature from modeled notional source
signatures, each modeled notional source signature associated with a source
2 Appellants’ contentions present additional issues. Because the identified
issue is dispositive of Appellants’ arguments on appeal, we do not reach the
additional issues.
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Application 13/483,327
element of the acoustic source,” as recited in independent claim 1 and
commensurately recited in independent claims 9 and 17.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We concur with Appellants’ contention
the Examiner errs in finding Parkes teaches or suggests the disputed
limitation. (App. Br. 7; Reply Br. 5—6.)
The Examiner relies in particular on Parkes’ teaching in paragraph 69,
which describes modeling source signatures, and states “the modeled source
signatures are generated by the model in the form of notional source
signatures. Thus, in the preferred embodiment, the measured source
signatures are converted to notional source signatures for comparison.”
(Parkes 169 (emphasis added); see Ans. 9.) We agree Parkes teaches a
modeled notional source signature, which is recited in the claims, but we
disagree Parkes also teaches “computing a modeled near-field signature
from modeled notional source signatures,” as also recited in the claims.
(App. Br. 18 (Claims App’x) (emphasis added); see also Reply Br. 5.) As
Appellants note, “[t]he descriptions in paragraphs [0054]-[0056], [0064]-
[0067] and [0069]” of Parkes “demonstrate that Parkes teaches computing a
modeled source signature in the form of a notional source signature from
measured physical parameters in order to compare the modeled source
signature with a measured source signature that has been converted to a
notional source signature.” (Reply Br. 5) (emphasis added.) In other words,
Parkes teaches comparing a modeled source signature with a measured
source signature, where both signatures have been converted to notional
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signatures. We agree with Appellants this disclosure in Parkes does not
teach or suggest “computing a modeled near-field signature from modeled
notional source signatures,” as recited in claim 1 and commensurately
recited in claims 9 and 17.
For the foregoing reasons, we will not sustain the Examiner’s
rejection of independent claims 1, 9, and 17, or the rejections of the claims
dependent thereon. Although the Examiner relies on an additional reference,
Lippuner, in rejecting claims 6, 14, and 22, the Examiner’s findings
regarding Lippuner do not remedy the deficiencies in the Examiner’s
findings regarding Parkes as noted above.
NEW GROUND OF REJECTION
Claims 1—23 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1296—97
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
The Supreme Court characterizes the second step of the analysis as “a search
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for an ‘inventive concept’—i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Id. (alteration in
original).
Independent claims 1, 9, and 17 are directed to a method, non-
transitory computer-readable medium, and computer system, respectively,
comprising a processor configured to transform data. In other words, the
independent claims are directed to computations performed by a computer
(i.e., software).
Our reviewing court instructs us that “[sjoftware can make non­
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be accomplished
through either route.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). We are further instructed that we must determine whether
“the claims are directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the Alice analysis.”
Id. Here, the limitations at issue are not directed to an improvement of a
computer’s functionality. We conclude, at step one, that the independent
claims are directed to an abstract idea.
Next, in step two, we must determine whether the additional elements
of the independent claims transform them into patent-eligible subject matter.
Although the independent claims set forth specific data to be computed and
to be used in the computations, they do not indicate what use is made of the
results obtained. Rather, the claims recite only processes of “computing”
certain data by taking existing information (such as a “modeled notional
source signature” and a “recorded near-field signature”) and manipulating it
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into a new form (such as a “notional source signature”). Appellants’
Specification describes at pages 11—18 various equations and “data
processing techniques” for performing the recited “computing” steps. As
our reviewing court concluded in Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014), “a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.” Thus, the limitations
of these claims do not transform the abstract ideas embodied in the claims.
Rather, they simply implement those ideas. See id. (quoting Parker v.
Flook, 437 U.S. 584, 595 (1978): “If a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is
for a specific purpose, the claimed method is nonstatutory.”).
The independent claims, when considered “both individually and ‘as
an ordered combination,”’ amount to nothing more than an attempt to patent
the abstract ideas embodied in the steps of these claims. See Alice, 134 S.
Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, the limitations
of independent claims 1, 9, and 17 fail to transform the nature of these
claims into patent-eligible subject matter. See id. (citing Mayo, 132 S. Ct. at
1297, 1298).
For similar reasons, the limitations added by dependent claims (2—8,
10—16, and 18—23) do not transform the subject matter of the independent
claims. Each of the dependent claims recites only manipulations of data, in
the form of steps such as “retrieving,” “computing,” “comparing,” “scaling,”
“summing” and “transforming” data using mathematical algorithms.
Therefore, these claims are also not directed to patent-eligible subject
matter.
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DECISION
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejections
of claims 1—23 are reversed.
We enter a NEW GROUND OF REJECTION of claims 1-23 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED
37 C.F.R, $ 41.50(b)
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