Ex Parte Ludvigsen et al

Patent Trial and Appeal Board

Sep 13, 2017

13034964 (P.T.A.B. Sep. 13, 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.
13/034,964 02/25/2011 Hallgrim Ludvigsen 94.0267 1858
48879 7590 09/15/2017
SCHLUMBERGER INFORMATION SOLUTIONS
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
U S Docketing @ sib. com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HALLGRIM LUDVIGSEN, PHILIP RICHARD HODGSON, and
ALEXANDER MARTIN WILSON
Appeal 2015-000501
Application 13/034,964
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 5-10, 13-16, and 21-24 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-000501
Application 13/034,964
THE INVENTION
The Appellants’ claimed invention is directed to accessing a template
to perform an analysis linked to data (Spec., para. 3). Claim 10, reproduced
below, is representative of the subject matter on appeal.
10. A method comprising:
accessing a template;
using a computing device, instantiating the template to render a
graphical user interface with a graphical control for selection of at
least one entity of a modeling and simulation framework model;
performing an analysis defined by the template wherein the
analysis relies on linking to data associated with at least one entity
selected via the graphical control and wherein the linking comprises
tagging, with tags defined by the template, at least one member
selected from a group consisting of the at least one selected entity and
the data;
storing the tags; and
outputting information based at least in part on the analysis
wherein storage of the tags provides for auditing the analysis.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2, 5-10, 13-16, and 21-24 are rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
2. Claims 1, 2, 5-10, 13-16, and 21-23 are rejected under 35
U.S.C. § 103(a) as unpatentable over Bays (US 2006/0129596 Al; published
June 15, 2006), Dusevic (US 2002/0055868 Al; published May 9, 2002),
and Hillis (US 2003/0196094 Al; published Oct. 16, 2003).
3. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bays, Dusevic, Hillis, and Bacon (US 2009/0019083 Al; published
Jan. 15,2009).
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Appeal 2015-000501
Application 13/034,964
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of claim 10 under 35 U.S.C.
§ 101 is improper (Reply Br. 9-13). The Appellants argue that the claim is
not directed to an abstract idea and would not preempt a fundamental
economic practice (Reply Br. 9-13).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 3, 4).
We agree with the Examiner. Under 35 U.S.C. § 101, 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: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 10 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/034,964
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
Here, we find that the claim is directed to the concept of using a
template to perform an analysis using data. The claim is directed to the idea
of collecting data and comparing it and is an abstract idea beyond the scope
of § 101 as well as being a fundamental economic practice used in business.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (Reply Br. 13). While pre­
emption “‘might tend to impede innovation more than it would tend to
promote it,’ thereby thwarting the primary object of the patent laws,” Alice,
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Application 13/034,964
134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293), “the absence of
complete preemption does not demonstrate patent eligibility” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015)(“[T]hat the claims
do not preempt all price optimization or may be limited to price optimization
in the e-commerce setting do not make them any less abstract.”).
For these reasons given above, the rejection of claim 10, and its
dependent claims which were not separately argued, is sustained.
We reach the same conclusion as to independent claim 1 and its
dependent claims. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea ‘while adding the words “apply it” is not enough for
patent eligibility.’” Alice, 134 S. Ct. at 2358 (quotingMayo, 132 S. Ct. at
1294).
Rejection under 35 U.S.C. § 103(a)
The Appellants argue in the Appeal Brief at pages 13-17 that the
rejection of claim 1 is improper because the cited prior art fails to disclose
the claim limitation requiring the system to:
perform an analysis defined by the template wherein the analysis
relies on linking to data associated with at least one entity selected via
the graphical control.
(App. Br. 13).
In contrast, the Examiner has determined that the cited claim
limitation is found in Dusevic at paragraphs 2, 51-53, 62, 64, 67, 203, 204,
308, 332, 335, and Figures 5 and 10 (Ans. 10-12, 39-43).
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Application 13/034,964
We agree with the Appellants. Here, the cited claim limitation
requires “performing an analysis defined by the template wherein the
analysis relies on linking to data associated with at least one entity selected
via the graphical control.” The above citations to Dusevic fail to specifically
disclose the above argued claim limitation. For example, Dusevic at
paragraph 335 does disclose the broad use of a template to create
consistency in presentation, but this paragraph fails to specifically disclose
“performing an analysis defined by the template wherein the analysis relies
on linking to data associated with at least one entity selected via the
graphical control.” For this reason, this rejection of claim 1 and its
dependent claims are not sustained.
Independent claim 10 contains a similar limitation and the rejection of
this claim and its dependent claims are similarly not sustained for the same
reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35U.S.C. § 101 as listed in the rejection above.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) as listed in the rejections
above.
DECISION
The Examiner’s rejection of claims 1, 2, 5-10, 13-16, and 21-24 is
sustained.
AFFIRMED
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