COMMISSIONER'S DECISION
Sec. 2, 36(1) & Rule 60 - SEISMIC METHOD
Additional disclosure pages submitted in response to the Final Action are
considered acceptable thereby overcoming the Sec. 36(1) rejection and
satisfying the requirements of Sec. 2. Claims were altered to comply with
Rule 60.
Final Action: Modified - amendment overcomes objections.
*****************
Patent application 252025 (Class 349-10), was filed on May 7, 1976 for
an invent ion entitled "SEISMIC METHOD AND SYSTEM OF IMPROVED RESOLUTION
AND DISCRIMINATION." The inventor is Carl H. Savit, assignor to Western
Geophysical Company of America. The Examiner in charge of the application
took a Final Action on August 27, 1979 refusing to allow it to proceed
to patent.
The subject matter of this application relates to seismic systems in marine
or land surveys. An impulse such as an explosive shot is initiated and
a record is made of the impulses received at sensors or detectors at spaced
locations along a seismic cable extending from the shot point. Figures
1, 9 and 12 are shown below.
(see formula I)
Marine seismic cable 56 is unreeled from cable reel 54 mounted on explor-
ation ship 52, Shot 68 is detonated near the ship and reflected waves
are sensed at various pick up points along the cable 56.
(See formula 1)
Output from the sensors in cable assembly 152 is routed to the data receiver
control 172 from where it may be processed to monitor seismic section 174
for use by the survey crew and to produce a high resolution cross section 176
for study by geologists.
(See formula 2)
Components of the array former 184 of figure 9 are shown in detail in figure
12 and are described in detail on pages 39, 39a, 39b and 39c of the disclos-
ure.
In the Final Action the application was rejected as being directed to non-
statutory subject matter in view of Section 2 of the Patent Act, and Section
36(1) was applied with respect to Figure 12 for not showing a novel
combination. Rule 60 was also applied to the claims. That action stated
(in part):
...
The application remains rejected as being directed to non-
statutory subject matter in view of the definition of
invention in Section 2 of the Patent Act . A1 so the require-
ments of Rule 60 set out in the report of November 15, 1978
are not met by the newly submitted set of claims.
...
Applicant states at the bottom of page 3 of his letter of June
27, 1979: "it is submitted that the invention set out in
the revised claims at least falls into categories 4 and 5
of the Commissioner's Decision, page xxvi. The entire
block 184 in Figure 12 May be viewed as constituting a com-
puting apparatus programmed in a novel way, wherein it is
the apparatus itself that the applicant wishes to protect...".
In order to accomplish applicant's wish it is necessary
to show that a novel combination has been disclosed in Figure 12.
As shown above a novel combination is not disclosed in
accordance with Section 36(1). A combination of the components
of Figure 12 is not disclosed in accordance with Section 36(1).
It is noted from page 35 line 15 that the input to processor
184 is preferably recorded data while the output is also
recorded data (on tape 190). Although this data may be gathered
by novel apparatus (as disclosed in application 252,022) the
processor 184 which applicant designates in his letter as being
what applicant wishes to protect by patent coverage has not
been shown to be novel wherein the novelty lies in the apparatus
rather than in the program or algorithm carried out by the
apparatus. The applicant has therefore failed to distinguish
the alleged invention from the subject matter refused in the above
noted Commissioner's Decision and the application remains rejected
in view of Section 2.
...
In response to the Final Action the applicant submitted additional disclosure
with regard to figure 12 and amended certain claims. He stated (in part):
...
It is not believed that there is any dispute that geophysical
prospecting is in itself a new and useful art as set out in
Section 2 of the Patent Act and it is understood that the major
thrust behind the final action is a holding that applicant is
claiming what is essentially a method of computation not
properly subject to patent protection in Canada. Applicant
has realized that much improved geophysical survey results
can be obtained by providing apparatus in which the direct-
ivity of each array signal is varied or, expressed as a method,
carrying out the survey by a series of steps which select
signals appropriately to give varying directivity to each
array. The realization that a more efficient survey would
result from using such apparatus or carrying out such steps is not
a data processing step nor, is it in any way obvious. No prior art
has been cited to show that anyone has used such apparatus or
carried out such methods before. Rather, the application stands
rejected on the basis of Section 2. The final action refers
to many issues other than the rejection based on Section 2 but
perhaps the matter is summarized in the last sentence of the
second paragraph which stated "The applicant has therefore failed
to distinguish the alleged invention from the subject matter
refused in the above noted Commissioner's Decision and the
application remains rejected in view of Section 2." Although
previous office actions have referred to the Examiner's position
that the disclosed computations would necessarily be performed
by programming a general-purpose computer this hold ing is not
repeated in the final action and is not understood to form a basis
for the final action.
It is applicant's position that Figures 9-12 disclose specific
apparatus described in detail in the disclosure. Figure 13 shows
the operation of this apparatus.
As described and claimed, the invention of this application re-
lates to apparatus, and a related method, for seismic exploration
which includes some data processing equipment. Such apparatus
is properly capable of patent protection. In the Commissioner's
Decision published in the Patent Office Record of August 1, 1978,
at page xxv, this point is set out in the following sentence,
"It is clear however, that where an invention has been made in
'a process control system', where a program is merely an incidental
part of the system, it will not be objectionable" (emphasis
in original). That is precisely the situation of the present
application. It is cleanly a matter of judgement as to whether
apparatus is in its essential form simply a new method of calcula-
tion or whether it represents a selection of elements which
together contribute to an advance in the art.
...
The issue before the Board is whether or not the application describes pat-
entable subject matter within the meaning of Section 2. In addition, the
rejections made under Rule 60 and Section 36(1) of the Act will also be con-
sidered.
Amendment pages submitted in response to the Final Action containing the
last part of claim 8 along with claims 9 to 14 have been entered. Claim 1
reads:
1. In a seismic exploration system for processing reflected
seismic signals, including an elongated seismic cable
having a plurality of elemental seismic sensor units
connected to and located at intervals along the greater
part of the length of said cable, each elemental seismic
sensor unit including a lesser plurality of electrically
interconnected seismic sensors, the improvement comprising:
means for forming a subplurality of seismic array signals
by first applying selected relative delays to seismic
signals from first selected sets of elemental seismic
sensor units, the relative delays being selected to substan-
tially eliminate differential moveout between all the
seismic signals within each set, and then by combining said
relatively delayed signals;
means for varying the directivity of each said array signal
by continuously varying the relative delays as defined by
a desired function of reflection time.
On review of the Final Action we note that the Examiner held that the "applicant
has not disclosed a novel combination with respect to the components shown in
figure 12." He added that a combination of components of this figure is not
disclosed in accordance with Sect ion 36 (1) of the Act . Having found that the
disclosure did not contain sufficient description of novel apparatus the Examin-
er concluded that the only novelty found in this application resides in the
program or algorithm carried out by the apparatus and refused the application
under Section 2 of the Patent Act.
First, considering the rejection under Section 36(1) we find the applicant
has responded by supplying additional description in the form of amended
page 39 along with additional pages 39(a), 39(b), and 39(c). We have studied
the amended description in conjunction with the disclosure as originally filed.
We find the amended description does describe apparatus that could be reasonably
inferred, as required by Rule 52 of the Patent Rules, and do recommend its entry
under Rule 47(3)(c). Since the additional apparatus description is acceptable
the objection made in the Final Action under Sect ion 36 (1) is overcome and we
recommend withdrawal of that rejection.
With respect to the rejection under Section 2 of the Act the applicant
argues that the invention lies in assembling known components in a new
way to produce a new and previously unattainable result. He states that
the "entire block 184 in Figure 12 may be viewed as constituting a com-
puting apparatus programmed in a novel way". Having reached the conclus-
ion that the amended disclosure is acceptable and satisfies the requirements
set out by Section 36(1) of the Act, we do not agree with the conclusion
reached in the Final Action that the "novelty lies in a program or
algorithm". Also, we find this application is not like the Schlumberger vs
The Commissioner of Patents decision where it found that "the discovery
that by making certain calculations according to certain formulae, useful
information could be extracted from certain measurements", was not an
invention within the meaning of Section 2. Therefore we recommend withdrawal
of the Section 2 rejection.
As we stated earlier the Final Action also applied Rule 60 to the claims.
In response to that action the Applicant amended claims 11 and 13 in dependent
form and we believe that the requirement of that rule is now met.
In summary, we recommend entry of pages 39, 39 (a) , 39 (b) , 39 (c) , and that
the rejections based on Section 2, Section 36(1) and Rule 60 be withdrawn.
A. McDonough M.G. Brown S.D. Kot
Chairman Assistant Chairman Member
Patent Appeal Board
I concur with the reasoning and findings of the Patent Appeal Board. I
withdraw the Final Action and I direct that amended pages 39, 39(a), 39(b)
and 39(c) be entered. The application is to be returned to the Examiner
for further consideration.
J.H.A. Gari‚py Agent for Applicant
Commissioner of Patents A.E. MacRae & Co.
Box 806, Station B
Ottawa, Ont.
Dated at Hull, Quebec
this 5th. day of August, 1983