In re Abrams

• Decision Date: 10 April 1951
• Docket Number: Patent Appeals No. 5723.
• Citation: 188 F.2d 165
• Parties: In re ABRAMS.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

188 F.2d 165 (1951)

In re ABRAMS.

Patent Appeals No. 5723.

United States Court of Customs and Patent Appeals.

March 6, 1951.

Rehearing Denied April 10, 1951.

Sidney A. Johnson, Dallas, Tex. (Richard K. Stevens, Washington, D. C., of counsel), for appellant.

E. L. Reynolds, Washington, D. C. (S. Wm. Cochran, Washington, D. C., of counsel), for Commissioner of Patents.

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Judges.

GARRETT, Chief Judge.

By this appeal appellant seeks review and reversal of the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner, hereinafter referred to as the examiner, of four of the claims in appellant's application for patent entitled "for Petroleum Prospecting Method."

As passed on by the examiner the application contained eight claims numbered 1 to 8, inclusive, all of which he rejected. Appellant appealed to the Board of Appeals and before that tribunal withdrew four of the claims, the appeal as to which was dismissed. Those remaining and which are embraced in the appeal to us are Nos. 1, 2, 4, and 8.

In the brief of the Solicitor for the Patent Office it is said: "The rejection of the claims in this case is based on the ground that the claims fail to define a process involving subject matter which properly comes within the terms of Section 4886, R.S. 35 U.S.C.A. § 31 The specific objection is that the steps in the claims which constitute the heart of the invention are purely mental in character."

No prior art was cited in connection with the rejection of the claims.

The board quoted claim 4 as illustrative. There is no contention that any of the other appealed claims contain limitations which patentably differentiate them from that claim, and we here reproduce it: "4. A method of prospecting for petroliferous deposits comprising, (1) sinking a number of boreholes in an area under investigation, (2) sealing off each of said boreholes from the atmosphere at any desirable depth below the level of atmospheric breathing in such manner that a known area of the inner surface thereof is made available for diffusion of subsurface gases into said borehole, (3) reducing the pressure in said borehole to a value substantially below atmospheric, (4) measuring the rate of pressure rise per unit area of surface available for diffusion of subsurface gases into said borehole for a number of timed intervals, (5) determining the rate of pressure rise in said borehole at a standard reference pressure from the values obtained in step (4), and (6) comparing the rates determined in step 5 for the different boreholes to detect anomalies which are indicative of the presence of petroliferous deposits."

We take from the brief for appellant the following description of the claimed method, the reference to pages of the record being deleted:

"In general the invention here involved is a new and useful method of prospecting for the presence of petroliferous deposits.

"Natural gas or petroleum oil deposits give rise to certain gaseous emanations in and about the area of their location. Anomalous variations in the amounts of these gaseous materials may be utilized to detect the presence of the aforesaid deposits.

"By applicant's method, the presence of these anomalous variations is more reliably and readily determined by measuring variations in the flow rates of the gaseous emanations at pressures substantially below atmospheric.

"More specifically, a number of boreholes are sunk in the area under investigation at a distance below the level at which the movement of air and gases within the soil, i. e., soil breathing, would impair the accuracy of the results desired. Each borehole is then sealed off so that a collecting chamber is formed into which the subsurface gases may diffuse. A vacuum pump is connected to the borehole and the pressure in the chamber is reduced to a value substantially below that of atmospheric. The pressure is then allowed to rise and, by means of a suitable pressure measuring device, readings are taken at regular time intervals. The increase in pressure in a borehole for any time interval is an indication of the flow rate of the gaseous emanations therein at the average pressure prevailing during that time interval.

"In order to ascertain the value or extent of the various physical and positive steps enumerated above, obviously some use must be made of the various flow rates obtained. In order to evaluate the various flow rates determined from the field data they must be compared at some uniform or standard reference pressure. This may be any value and usually some value within the range over which the pressure changed in a majority or all of the boreholes would be selected as the basis of comparison as a matter of convenience.

"If the boreholes are of a uniform dimension, the flow rates at the reference pressure are then merely compared to detect anomalies which are indicative of the presence of petroliferous deposits. This comparison permits a determination of the extent or limits of the physical steps taken.

"In case the boreholes vary as to dimension, the flow rate data is further converted to a standard surface area value and the flow rates compared as stated above."

Counsel for appellant state in the brief on his behalf that a need exists "for a rule of guidance in so-called `mental step' cases," asserting that much confusion exists growing out of decisions which have been rendered. In connection with this, the brief states: "While appellant has found it possible, after no little effort, to draw some distinctions and conclusions from the various decisions involving this type of case, no decision has been found which specifically sets forth any logical rule to follow."

Going further, the brief sets forth as applicable to cases where the claims contain certain so-called mental steps, three suggested "rules of law" reading:

"1. If all the steps of a method claim are purely mental in character, the subject matter thereof is not patentable within the meaning of the patent statutes.

"2. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the alleged novelty or advance over the art resides in one or more of the so-called mental steps, then the claim is considered unpatentable for the same reason that it would be if all the steps were purely mental in character.

"3. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the novelty or advance over the art resides in one or more of the positive and physical steps and the so-called mental step or steps are incidental parts of the process which are essential to define, qualify or limit its scope, then the claim is patentable and not subject to the objection contained in 1 and 2 above."

The brief states that the proposed rules were formulated on behalf of appellant from a review of many decisions, and it is said: "Appellant strongly feels that this court should adopt the three rules promulgated * * *, or some modification thereof, in order that some rule of reason which is readily understandable to all can be applied to these `mental' step cases."

It is argued that appellant's claims come within the third rule.

Apparently, the proposed rules were suggested to the tribunals of the Patent Office — at least to the examiner, who mentions them in his reply to the brief for appellant filed with the appeal to the board — but neither the examiner nor the board expressed either approval or disapproval of them.

From such examination of the decisions as we have been able to make, the suggested rules appear to accord with them, but it is unnecessary for us arbitrarily to go beyond the requirements of the instant case. For the purpose of its decision, it is sufficient to determine whether or not the claims fall within proposition 3 upon which appellant relies. According to that rule, it must appear that there has been (a) an advance over prior art and that (b) such advance or novelty resides in the physical steps set forth in the claims.

Inasmuch as no prior art was cited below, it would appear that an advance in the art is conceded so far as the tribunals of the Patent Office are concerned. At any rate, in the absence of an adverse finding as to that, no question about it is before us for consideration, and the sole question is whether the novelty thus assumed is the result of a physical act or is simply a mental concept.

In the statement of the examiner following the appeal to the board it was said: "All claims have been rejected as improper under the statutes in setting forth a process that predominately involves merely a mental process in obtaining the result. This mental process is indicated by such terms in the claims as `calculating' applied for instance to mathematically making certain computations from figures taken down from pressure observation, `comparing' applied to mere mental comparison of figures on a sheet `converting' as related to mathematically calculating the flow data or pressure rise with respect to a standard reference pressure, `determining' applied, for instance, to the reading of the pressure rise figures; `correcting' involving mere mathematical calculations.

"The total effect of these expressions and steps in the claims is convincing that the nature of the invention is like that found in such decisions as Ex part Toth, 63 U.S. P.Q. 131 (correcting and determining); In re Heritage, 150 F.2d 554, 32 C.C.P.A., Patents, 1170 and Halliburton Oil Well Cementing Co. v. Walker, 9 Cir., 146 F.2d 817, involving therein such purely mental terms as `determining', `registering', `counting', `observing', `measuring', `comparing', `recording', and `computing', in which the processes claimed were found to be non-statutory."

The decision in the Toth case, supra, was by the Board of Appeals of the Patent Office and that in the Hallibur...