Ex Parte McDavid

Patent Trial and Appeal Board

Feb 4, 2019

14306470 (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/306,470 06/17/2014 William T. McDavid
87627 7590 02/06/2019
Mossman, Kumar & Tyler PC
P.O. Box 421239
Houston, TX 77242
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.
IN-1216-US 8932
EXAMINER
LOBO,IANJ
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
02/06/2019 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):
docket@mktlaw.com
tthigpen@mktlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM T. MCDA VID 1
Appeal2018-001845
Application 14/306,470
Technology Center 3600
Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-15 and 17, which constitute all the
claims pending in this Application. Br., i. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons explained below, we find error in the
Examiner's rejection of these claims under 35 U.S.C. § 101, but we do not
find the Examiner erred in rejecting claim 15 as being anticipated by Elder.
Accordingly, we AFFIRM-IN-PART the Examiner's rejections.
1 "The real party in interest in this appeal is INOVA Ltd." Br. 1. We, thus,
proceed on the basis that, for purposes of this appeal, INOV A Ltd. is the
"Appellant."
Appeal2018-001845
Application 14/306,470
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to conducting a seismic survey
using a network configured to transmit data." Spec. ,r 2. Claims 1, 8, 15,
and 1 7 are independent.
Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A system for conducting a seismic survey, comprising:
at least one seismic sensor configured to supply a signal
responsive to reflections of acoustic energy from an earth
surface;
sampling circuitry in electrical communication with the
at least one seismic sensor and configured to convert the signal
to a sequence of samples, wherein each sample is represented
by a bit string; and
at least one processor and a computer memory accessible
to the at least one processor, the at least one processor
configured to:
create a sample block by storing at least a portion
of the plurality of samples in memory units in the
computer memory, wherein each sample is stored in a
corresponding memory unit;
assign a number to the at least one bit of each
sample;
form at least one column that includes bits having
a same assigned number;
and
compress data contained in the sample block by
encoding the at least one column to produce compressed
seismic data;
a data communication device configured to transmit the
compressed seismic data; and a recording computer configured
to receive the compressed seismic data.
Elder et al.
REFERENCE
US 2008/0186806 Al
2
Aug. 7, 2008
Appeal2018-001845
Application 14/306,470
THE REJECTIONS ON APPEAL
Claims 1-15 and 17 (i.e., all the claims) are rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter.
Claim 15 is rejected under 35 U.S.C. § 102(a)(l) as being anticipated
by Elder.
ANALYSIS
The rejection of claim 15 as being anticipated by Elder
Appellant does not respond to the Examiner's anticipation rejection of
claim 15. See Br. generally. The Examiner addresses this stating "it is
noted that Appellant has not argued the merits of the 3 5 USC [ §] 102
rejection of claim 15 and therefore the [§] 102 rejection should be
sustained." Ans. 2.
In view of the above, we summarily sustain the Examiner's rejection
of claim 15 as being anticipated by Elder. See Hyatt v. Dudas, 551 F .3d
1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground
of rejection to the Board ... the PTO may affirm the rejection of the group
of claims that the examiner rejected on that ground without considering the
merits of those rejections."). Also, Appellant acknowledges "two typos" in
claim 15 and seeks to correct same. Br. 9. This is not the proper procedure
to follow when seeking to amend claim language.
The rejection of claims 1-15 and 17 (i.e., all the claims)
as being directed to patent ineligible subject matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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Application 14/306,470
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. 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 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diamond, 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
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Application 14/306,470
mathematical formula." Diamond, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, 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. at 191 (citing Gottschalk and Parker); see, 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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (84 Fed. Reg. 50 (Jan. 7, 2019))
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
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Appeal2018-001845
Application 14/306,470
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
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
§ 2106.0S(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 Memorandum.
In the present matter, the Examiner addresses each independent claim
(i.e., claims 1, 8, 15, and 17) concluding that each is directed to
"compressing seismic data and transmitting the compressed data." Final
Act. 4. Initially, we agree that the claims are not directed to methods of
organizing human interactions such as a fundamental economic practice, or
mental processes. As for the judicial exception of mathematical concepts,
the Examiner states, "the idea of compressing seismic data and transmitting
the compressed data is similar to, and not meaningfully different from, the
basic concept of manipulating information using mathematical relationships
that the courts have found to be abstract ideas." Final Act. 4 (emphasis
added). The Examiner concludes that none of the independent claims
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Application 14/306,470
contain elements "to qualify as 'significantly more"' and that none of the
dependent claims "contain an 'inventive concept"' that might transform the
"independent claim into a patent-eligible application of the otherwise
ineligible abstract idea." Final Act. 5.
Appellant disagrees with this characterization of all the claims being
directed to an abstract idea and provides reasons for the disagreement. See
Br. 6-9.
In accordance with the Memorandum above, we must first address the
judicial exception relied on by the Examiner. Here, all the claims have been
rejected as "not directed to patent eligible subject matter" on the basis that
the claimed compression and transmission of data (i.e., "manipulating
information") uses "mathematical relationships." Final Act. 2, 4. The
Memorandum provides guidance on this point stating that mathematical
concepts are "mathematical relationships, mathematical formulas or
equations, [and/or] mathematical calculations." See Memorandum.
In each independent claim, while it can be said that "mathematical
relationships" and/or "mathematical calculations" are inherent therein ( e.g.,
"wherein each sample is represented by a bit string"), the Examiner has not
made clear why the mere presence of a mathematical relationship or
calculation within a limitation renders the entire claimed subject matter
patent ineligible. No formula or equation is recited in these claims and the
Examiner fails to identify where the claims recite a limitation directed to a
particular "mathematical relationship[], mathematical formula[] or
equation[], [and/or] mathematical calculation[]."
Accordingly, and based on the record above, we do not agree with the
Examiner's analysis that Appellant's claim language recites patent ineligible
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Application 14/306,470
subject matter based on the employment therein of mathematical
relationships. We reverse the Examiner's rejection of claims 1-15 and 17 as
"not directed to patent eligible subject matter." Final Act. 2.
DECISION
The Examiner's rejection of claim 15 as being anticipated by Elder is
affirmed.
The Examiner's rejection of claims 1-15 and 17 because the claimed
invention is not directed to patent eligible subject matter 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)(l )(iv).
AFFIRMED-IN-PART
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