Ex Parte Market et al

Board of Patent Appeals and Interferences

Oct 23, 2009

10839785 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JENNIFER MARKET and GARY D. ALTHOFF
_____________

Appeal 2009-001843
Application 10/839,785
Technology Center 2800
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Decided: October 23, 2009
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Before ROBERT E. NAPPI, JOHN A. JEFFERY, and ELENI MANTIS-
MERCADER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001843
Application 10/839,785
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 5 through 19, 21 through 29, and 31 through 33.
We affirm in part.

INVENTION
The invention is directed toward a method of processing acoustic
signals from a downhole measurement system for drilling operations. See
paragraphs 0023 and 0024 of Appellants’ Specification. Claim 1 is
reproduced below:
1. A method comprising:
acquiring, in a borehole, propagating wave data to include a
plurality of coherent time-domain signals;
separating modes in the plurality of coherent time-domain
signals to form a plurality of separated modes by first identifying
coherent peaks in the plurality of coherent time-domain signals and
second extracting portions of the plurality of time-domain signals that
include the coherent peaks;
generating frequency coherence information for each of the
plurality of separated modes;
combining the frequency coherence information for each of the
plurality of separated modes to form combined frequency coherence
information; and displaying the combined frequency coherence
information.

REFERENCE

James H. McClellan, “Two-Dimensional Spectrum Analysis in Sonic
Logging,” 1986 IEEE International Conference on Acoustics, Speech, and
Signal Processing, 3105-3111 (1986).

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REJECTIONS AT ISSUE
The Examiner has rejected claims 12 through 15 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
The Examiner has rejected claims 1, 5 through 19, 21 through 29, and
31 through 33 under 35 U.S.C. § 102(b) as being anticipated by McClellan.

ISSUES
Rejection of claim 12 under 35 U.S.C. § 101
Appellants argue on page 10 of the Appeal Brief,1 and page 2 of the
Reply Brief that the Examiner’s rejection of claims 12 through 15 under 35
U.S.C. § 101 is in error as the claims are drawn to an article of manufacture,
a storage media, and as such meet the requirements of being concrete,
useful, and tangible.
Thus, Appellants’ contentions with respect to the rejection based upon
35 U.S.C. § 101 present us with the following issue: have Appellants shown
that the Examiner erred determining that independent claim 12 is directed to
non-statutory subject matter?

Rejection of claims 1, 5 through 19, 21 through 29, and 31 through 33
under 35 U.S.C. § 102(b)
Appellants argue on pages 11 through 13 of the Appeal Brief that the
Examiner’s rejection based upon 35 U.S.C. § 102(b) is in error. Appellants

1 Throughout the opinion we refer to the Brief dated August 22, 2007 and
Reply Brief dated January 21, 2008.
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Application 10/839,785
assert that the independent claims recite identifying coherent peaks in a
plurality of time-domain signals and extracting portions of the time-domain
signals that includes the coherent peaks. Appellants argue that McClellan
does not teach this feature.
Thus, Appellants’ contentions with respect to the rejection based upon
35 U.S.C. § 102(b) present us with the following issue: have Appellants
shown that the Examiner erred determining that McClellan teaches
identifying peaks in coherent time-domain signals and extracting portions of
the signals that include the peaks as claimed?

FINDINGS OF FACT
1. McClellan teaches a spectral analysis for use in sonic logging
of a fluid filled borehole. Abstract.
2. McClellan depicts in Figure 2, typical signals that may be
received from a constant diameter borehole surrounded by
homogeneous symmetrical cylindrical formation. Page 3110,
section 2.
3. McClellan teaches using a slowness (inverse velocity) time
analysis to analyze the wave forms. Slowness Time Coherence
(STC) is also used to analyze the received waveforms. The
STC process requires analysis of slowness time plane (shown in
Figure 3 as a plot of semblance vs. slowness and window
position) to determine significant peaks. The peaks are then
analyzed to determine individual wave components. Page
3106, section 3.

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Application 10/839,785
PRINCIPLES OF LAW
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W.
3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964); see also Gottschalk v.
Benson, 409 U.S. 63, 70 (1972). Further, while a claim may be drawn to a
machine, within the meaning of 35 U.S.C. § 101, the analysis to determine
patent-eligibility is not complete. See In re Ferguson, 558 F.3d 1359, 1363
(Fed. Cir. 2009).
Despite the apparent sweep of Section 101, the Supreme Court has
held that certain categories of subject matter are not entitled to patent
protection. Benson, 409 U.S. at 67. In the most recent majority opinion
addressing § 101, the Supreme Court explained that there are three
categories of subject matter for which one may not obtain patent protection.
These judicially-created exceptions are “laws of nature, natural phenomena,
and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). The
Federal Circuit has further recognized that the Court’s precedent suggests
“the ‘mathematical algorithm’ exception [an example of the abstract idea
judicial exception] applies to true apparatus claims.” In re Alappat, 33 F.3d
1526, 1542 (Fed. Cir. 1994). Thus, the mathematical exception analysis
used in “Benson . . . applies equally whether an invention is claimed as an
apparatus or process, because the form of the claim is often an exercise in
drafting.” Id. (quoting In re Johnson, 589 F.2d 1070, 1077 (CCPA 1978)
(internal quotation marks omitted)).
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If a claimed machine (or article of manufacture)2 involves a
mathematical algorithm, then we must determine whether the scope of the
claimed invention encompasses one of the judicially-created exceptions.
This determination of claim scope requires that we make two inquiries:
(1) Is the claim limited to a tangible practical application, in which the
mathematical algorithm is applied, that results in a real-world3 use 4
(e.g., “not a mere field-of-use label having no significance”)?5
(2) Is the claim limited so as to not encompass substantially all
practical applications of the mathematical algorithm6 either “in all
fields” of use of the algorithm or even in “only one field?”7

2 Notwithstanding the court’s statement in Nuijten, 500 F.3d 1346, 1356 n.7
(Fed. Cir. 1007) (“We have never held that a manufacture is ever required to
produce any result.”), if an applicant chooses to claim the manufacture in
terms of applying a mathematical algorithm (e.g., Appellants’ claim 19),
then this two-part inquiry applies to determine if the claim is directed to
eligible subject matter under § 101.
3 “Real-world” is not sufficient alone to establish patent-eligible subject
matter absent tangibility. See Nuijten, 500 F.3d at 1356.
4 See Benson, 409 U.S. at 68 (noting that the claim at issue was “so abstract
and sweeping as to cover both known and unknown uses . . . .”).
5 See Alappat, 33 F.3d at 1544 (noting that the claim’s recitation of “a
rasterizer for creating a smooth waveform is not a mere field-of-use label
having no significance.”).
6 Benson, 409 U.S. at 71-72.
7 See Bilski, 545 F.3d at 957 (citing Diehr, 450 U.S. at 192 n.14)
(“[I]neligibility under § 101 ‘cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment.’”).
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If the machine (or article of manufacture) claim involves a
mathematical algorithm and fails either prong of our two-part inquiry, then
the claim is not directed to patent-eligible subject matter under § 101. Ex
parte Gutta, No. 2008-4366, 2009 WL 2563524 (BPAI 2009) (per curiam)
(expanded panel), at *1.
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

ANALYSIS
Rejection of claim 12 under 35 U.S.C. § 101
Appellants’ arguments have not persuaded us that the Examiner erred
in determining that independent claim 12 is directed to non statutory subject
matter. Appellants’ arguments on page 10 of the Brief focus on claim 12
being drawn to a “signal bearing medium that includes a tangible storage
apparatus” and, thus, having a practical utility as part of a computer.
Further, Appellants argue that the claim limitations represent a tangible
object because the article can be used to “create a new machine.” We are
not persuaded by Appellants’ arguments.
Claim 12 recites “[a] signal bearing medium, including at least one of
a rewritable storage medium and a non-rewritable storage medium, and
encoded with machine-readable instructions, wherein the instructions when
read and executed comprise…” Thus, claim 12 is drawn to an article of
manufacture, a storage media. However, the analysis does not end here. As
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discussed supra, if the article of manufacture involves an algorithm, then we
must determine whether the scope of the claimed invention encompasses one
of the judicially-created exceptions.
The Examiner has found that the method steps of claim 12 appear to
be useful and concrete but does not produce a tangible result as “the
outcome of the generating, receiving, processing, extracting, and combining
steps have not been used in a disclosed practical application nor made
available in such a manner that its usefulness in a disclosed practical
application can be realized.” Answer 15. Although the “useful, concrete,
and tangible result” test is no longer adequate, Ferguson, 558 F.3d at 1364
n.3, we nonetheless concur with the Examiner to the extent that the claim is
not limited to a tangible practical application in which the algorithm is
applied.
Claim 12 recites an algorithm whereby frequency signals are
generated, received, processed, portions extracted, elements are used to
generate information which is combined with other information. The claim
does not recite what the signals generated and processed by the algorithm
represent or how they apply in the real world. Appellants’ Specification, in
paragraphs 0007 and 0023 identify that the signals represent acoustic signals
which are transmitted and received as part of a borehole monitoring system.
However, claim 12 recites no limitations directed to using the signal
processing algorithm for processing acoustic signals or as part of a borehole
monitoring system. Thus, we do not find that the claim is limited to a
tangible practical application in which the algorithm is applied.
We also find that the claim does not meet the second requirement of
the test as claim 12 is not limited so as to encompass all practical
applications of the algorithm. As discussed, claim 12 does not recite what
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type of frequency signals (e.g. sound, electromagnetic, light, etc.) the
algorithm processes. While claim 12 includes a limitation that the
instructions are for generating and receiving signals, which suggests that the
algorithm operates on a machine, Appellants’ Specification provides no
details about such a machine. Thus, the scope of claim 12 broadly applies
the signal processing algorithm to signals generated and received by any
device. Further, the limitations of processing the two signals to form
coherent signals, forming extracted coherent signals, generating frequency
coherence information and combining the frequency coherence information
are all abstract concepts implemented using the first and second signals.
Thus, we conclude that the scope of claim 12 is such that it forecloses others
from using all practical applications of the algorithm in all fields of use (all
forms of signals processed by all forms of processing devices).
In summary, we sustain the Examiner’s rejection of claims 12 through
15 under 35 U.S.C. § 101 because even though independent claim 12 recites
an article of manufacture, the scope of the claim encompasses one of the
judicially created exceptions not entitled to patent protection.

Rejection of claims 1, 5 through 19, 21 through 29, and 31 through 33
under 35 U.S.C. § 102(b)
Appellants’ arguments have persuaded us that the Examiner erred in
determining that McClellan teaches identifying peaks in time-domain signals
and extracting portions of the signals that include the peaks. Independent
claim 1 recites separating modes in a plurality of time-domain signals by
first identifying coherent peaks and second extracting portions of the time-
domain signals that contain the peaks. Independent claims 8, 18, 22, and 29
recite similar limitations. Thus, the scope of independent claims 1, 8, 18, 22,
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and 29 recites a method of separating modes by first identifying peaks and
then extracting portions of the peaks.
The Examiner finds that Figure 2 shows received coherent time-
domain signals and that Figure 3 shows separating modes by first identifying
peaks in the time-domain signal and extracting the peaks. Answer 16.
Further, the Examiner states that the claim does not limit the method to the
sequence as argued. Answer 16. We find that the evidence supports the
Examiner’s finding that Figure 2 shows received time domain signals. Fact
2. We also find that the Evidence shows that the plot of Figure 3 is searched
for significant peaks, and a determination is made as to which wave
components correspond to the peaks. Fact 3. However, the plot of Figure 3
represents a slowness-time plane. Fact 3. Thus, we do not find that the
Examiner has shown that the claimed step of identifying time peaks in a
coherent time-domain signal as claimed. Further, we note that the
Examiner’s claim interpretation is in error as the claims recite that modes are
determined by first identifying peaks and then extracting portions, thus as
determining modes includes the step of identifying peaks it necessarily
follows that the step of identifying peaks is before the identification of
modes. Accordingly, we will not sustain the Examiner’s rejection of claims
1, 5 through 11, 18, 19, 21 through 29, and 31 through 33 as the Examiner
has not shown that the prior art teaches every element of independent claims
1, 8, 18, 22, and 29.
With respect to the rejection of claims 12 through 17, we note that the
scope of independent claim 12 differs from claim 1 in that claim 12 does not
recite determining modes. Claim 12 does not recite that the signals from
which coherent peaks are extracted are coherent time-domain signals.
Nonetheless, claim 12 does recite that peaks are identified in a frequency
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signal. As discussed above with respect to claim 1, Figure 3 depicts a plot of
a slowness-time plane. Fact 3. Thus, the peaks detected in Figure 3 are not
that of a signal. Accordingly, we will not sustain the Examiner’s rejection of
claims 12 through 17 as being anticipated under 35 U.S.C. § 102(b).
ORDER
The decision of the Examiner to reject claims 12 through 15 under 35
U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
The decision of the Examiner to reject claims 1, 5 through 19, 21
through 29, and 31 through 33 under 35 U.S.C. § 102(b) as being anticipated
by McClellan is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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Appeal 2009-001843
Application 10/839,785
AFFIRMED-IN-PART

ELD

SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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