Matter of Application of Sherwood

• Decision Date: 10 January 1980
• Docket Number: Appeal No. 79-579.
• Citation: 613 F.2d 809
• Parties: In the Matter of the Application of John W. C. SHERWOOD.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

613 F.2d 809

In the Matter of the Application of John W. C. SHERWOOD.

Appeal No. 79-579.

United States Court of Customs and Patent Appeals.

January 10, 1980.

Harold D. Messner, San Francisco, Cal., attorney of record for appellant; William J. Egan, III, San Francisco, Cal., of counsel.

Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents and Trademarks; Jere W. Sears, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and NEWMAN, Judge.^*

BALDWIN, Judge.

This is an appeal from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejections of all the claims as unpatentable under 35 U.S.C. § 101 for being directed to nonstatutory subject matter and under 35 U.S.C. § 112, paragraph one, for being based on a specification which fails to disclose the best mode. This application, serial No. 567,458,¹ was filed April 14, 1975, and is entitled "Continuous Automatic Migration of Seismic Reflection Data with Waveform Preservation." We reverse.

The Invention

A very common method of geophysical prospecting involves the production of a sonic (or seismic) wave in the earth. Certain subsurface geological formations, which may contain petroleum deposits, will reflect this induced seismic wave upward where it will be detected by variously spaced surface geophones. Each resulting geophone signal, as recorded, is merely an amplitude-time representation of that reflected sonic wave and is known as a "seismic trace." This invention involves apparatus (or "means for") and a method for producing a cross-sectional map (or "seismic depth section") depicting the position and shape of those subsurface formations.

Claim 15 is typical of the "means"-type claims which recite apparatus for plotting the desired map:

15. A system for converting a seismic time section consisting of a plurality of amplitude-versus-time seismic traces, into a seismic depth section consisting of a plurality of amplitude-versus-depth traces, so that events on the time section are migrated, both vertically and horizontally, into positions on said depth section corresponding to the actual spatial positions of the seismic reflectors in the subsurface, comprising:

(a) automated data processing means for sonogramming said amplitude-versus-time traces, a group of traces at a time, to produce a plurality of sonograms each identified, indexed and stored with a respective horizontal pivot coordinate of a respective group of sonogrammed amplitude-versus-time traces, and with a represented moveout,

(b) machine means for dividing each individual sonogram into a series of segments in accordance with a pre-selected seismic velocity function, and re-indexing and storing, also in accordance with said preselected velocity function, each of said series of segments into a particular storage zonelet representing a portion of said seismic depth section identified and indexed by a particular depth and horizontal coordinate, each of said series of divided and stored segments also being identified and indexed within a particular zonelet in accordance with a represented dip angle,

(c) machine means for automatically sonogramming said segments divided and stored within each of the zonelets to produce a final plurality of amplitude-versus-depth representations and

(d) machine means for directing and plotting the placement of said final representations on said seismic depth section, so that said seismic reflectors in said subsurface can be identified, in the vertical and horizontal location, by amplitude variations on said amplitude-versus-depth traces of said depth section.

Claim 21 is illustrative of the "means"-type claims which do not recite a final plotting "means."

21. An apparatus for converting a seismic time section consisting of a plurality of amplitude-versus-time seismic traces, into a plurality of machine generated, amplitude-versus-depth representations, so that events on the time section are migrated, both vertically and horizontally, according to the depth and horizontal coordinates of the seismic reflectors within a subsurface earth formation, sic they represent, comprising:

(a) automated data processing means for sonogramming said amplitude-versus-time traces, a group of traces at a time, to produce a plurality of sonograms each identified by and indexed through a respective horizontal pivot coordinate and a represented moveout,

(b) automated means for machine dividing each of said individual sonograms into a series of segments in accordance with a seismic velocity function characteristic of the subsurface under study, and for each of a series of zonelets representing portions of said subsurface under study, said automated dividing means including separate means for placing, storing and indexing also in accordance with said seismic velocity function, said series of segments into said zonelets to provide said plurality of machine generated, amplitude-versus-depth representations.

The specification is largely directed to a discussion of analog computer apparatus suitable for producing the desired subsurface map by solving the disclosed equations. The specification also states:

The final seismic depth section reproduced in FIGURE 8 was actually prepared by performing the method of the present invention on a large scale digital computer. It should be understood that the analog apparatus here shown as mechanical devices electrically interconnected are intended to assist in the understanding of the invention. The best mode contemplated by the inventor of carrying out the invention is to perform the processing steps of the invention on a large scale digital computer with the processed data imprinted into visible form on any of the presently available plotting devices.

The Rejection

The examiner stated in the Answer that the rejection was two-fold.

First, the examiner noted:

Claims 15, 18-23, and 27 are rejected under 35 U.S.C. § 112, paragraph one, as based upon an inadequate disclosure in that the best mode contemplated by the Applicant has not been described in sufficient detail to enable a person of ordinary skill in the art to make and use it. Applicant has failed to disclose any computer hardware, any flow charts, any algorithms or any programs with which his best mode would operate. Emphasis in original.

* * * * * *

To achieve Applicant's invention a person skilled in the art would have to find digital hardware equipment able to carry out the invention, and devise flow charts and write programs which are not set out in the prior art.

To achieve Applicant's objectives would thus require experimentation at length and an inordinate amount of speculation, industry and ingenuity, as the disclosure is merely an invention to others to see if they can obtain Applicant's objectives which Applicant does not disclose how to obtain.

Secondly:

Claims 15, 18-23, and 27 are rejected under 35 U.S.C. §§ 100 and 101 as directed to a non-statutory class of invention. The present claims are directed to an automated digital processing system and method, and the best mode disclosed is a programmed digital computer for carrying out the process. Since initiation and reception of seismic signals, computer operations on seismic signals and sonogramming for seismic records are old in the art, any patent that would issue on applicant's claims would wholly preempt the algorithm and program for carrying out the invention. This would on practical effect be a patent on the algorithm and program themselves.

Applicant's assertion that the Benson decision Gottschalk v. Benson, 409 U.S. 63 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972) upholds the patentability of the presently claimed invention fails to take into consideration the entire opinion as presented by Mr. Justice Douglas. Although the Court barred the conclusion that all software is unpatentable per se. 409 U.S. at 71 93 S.Ct. 253, the Court did cite the Report of the President's Commission, see supra, and several law journal articles and concluded its opinion by admonishing the legislature that "considered action by the Congress is needed," 409 U.S. at 73 93 S.Ct. 253. Thus, Benson has merely stated that some computer process may be patentable without stating any prerequisites for such patentability. The policy basis for the decision, however, precludes patentability where, as in the present application, the invention comprises a program and algorithm utilized in conjunction with a digital computer. The method sought to be patented has as its best mode application by programmed digital computer. This being the case, the instant claims if allowed would wholly preempt the mathematical process as described by applicant in the specification and would in practical effect be a patent on the mathematics, algorithm and program. Emphasis in original.

The examiner responded to appellant's brief in stating:

As regards to the rejection under 35 U.S.C. § 100 and 35 U.S.C. § 101 Appellant's distinguishing arguments are not without merit, but they fail to remove the instant invention from the scope of the decision in Benson. The novelty of the procedure herein claimed is merely in sequencing of operations within a digital computer in response to external signals, as to process seismic data in accordance with prior signals. The process is assertedly new merely in the nature of a program and algorithm.

* * * * * *

Regarding appellant's arguments that the present invention can be carried out by an analog computer, it is noted that the claims read upon a general purpose digital computer implemented mode for carrying out the present invention. Furthermore, at page 24, lines 20-24 of the specification, applicant states that the best mode he contemplates for carrying out the invention is to perform the processing steps on a large scale digital computer. Concomitantly, the present claims, if allowed, would provide applicant with a

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