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 Technology Center 2800 Decided: October 23, 2009 Before ROBERT E. NAPPI, JOHN A. JEFFERY, and ELENI MANTIS- MERCADER, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL
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). 2
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. 3
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. 4
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)). 5
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-world 3 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 algorithm 6 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. ). 6
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 7
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 8
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 timedomain 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, 9
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 timedomain 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 10
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). 11
AFFIRMED-IN-PART ELD SCHWEGMAN, LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 12