CITE: 197 F.2d 336
CMON: May 1952
PLAIN: Application of LUNDBERG et al.
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: May 28, 1952
HISTORY:
Proceeding in the matter of the application of Hans T.F. Lundberg and
another for patent covering improvements in the method and apparatus
employed in geophysical exploration by an operator transported in aircraft
or boat for the purpose of locating and recording valuable deposits, such
as ore and oil, in the earth below. The Board of Appeals of the United
States Patent Office, Serial No. 561,436, affirmed the action of the
examiner in rejecting the application, and applicants appealed. The Court
of Customs and Patent Appeals, O'Connell, J., held that the application
was properly denied because of lack of patentable subject matter.
Rehearing Denied June 24, 1952.
SUMMARY:
An algorithm claimed as a pure mental step is not patentable.
JUDGE: O'CONNELL, Judge
Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY,
Judges. Judge Jackson sat during the argument in this case but retired
April 1, 1952, before the opinion was fully prepared. He was recalled in
conformity with Section 294(c, d), Title 28 U.S.C. to participate in the
decision and did so.
DECISION:
This is an appeal from the decision of the Board of Appeals of the United
States Patent Office affirming the action of the examiner in finally
rejecting claims 99 to 116 of the application filed by appellants for a
patent covering improvement sin a method and an apparatus employed in
geophysical exploration by an operator transported in an aircraft or boat
for the purpose of locating and recording valuable deposits, such as ore
and oil, in the earth below.
Various references enumerated in the examiner's rejection were regarded by
the board as merely cumulative. The latter discussed and relied upon
pertinent disclosures of the following prior art of record: Hart 2,407,663
Sept. 17, 1946; Hull 2,468,554 April 26, 1949; Machts (Br.) 433, 450
Aug. 12, 1935; Heiland article, Engineering and Mining Journal, December,
1935, pages 609, 610; Heiland Text, "Geophysical Exploration," page 41,
published 1940.
Claims 99, 107, and 114 are illustrative of the subject matter of the
respective groups of the appealed claims and read as follows:
"99. Apparatus for geophysical exploration comprising, [1] a
maneuverable fluid supported craft adapted to transport an operator
and the hereinafter recited equipment, [2] a detecting instrument
carried by said craft which is responsive while the craft is in
motion and stationary to effects of earth anomalies related to
mineral deposits in the earth, [3] means carried by said craft in
operative connection with said instrument and effective automatically
to stabilize the latter with respect to both leveling and orientation
regardless of the motions of the craft, and [4] an automatic recording
device also carried by said craft in operative connection with said
instrument for making a record of said effects of said anomalies as
the instrument responds thereto.
"107. Apparatus for geophysical exploration comprising, a maneuverable
fluid supported craft adapted to transport an operator and the
hereinafter recited equipment, a detecting instrument carried by said
craft which is responsive while the craft is in motion and stationary to
effects of earth anomalies related to mineral deposits in the earth,
means carried by said craft in operative connection with said instrument
and effective automatically to stabilize the latter with respect to both
leveling and orientation regardless of the motions of the craft, said
instrument embodying means for projecting to the earth ultra high
frequency electric wave impulses, and means also carried by the craft
for receiving and recording said waves as reflected by said anomalies.
"114. A method of geophysical exploration which includes the following
steps, transporting by fluid suspension over an area under investigation
an operator and a detecting instrument which is responsive while in
motion and stationary to effects of earth anomalies related to mineral
deposits in the earth, automatically stabilizing said instrument with
respect to both leveling and orientation against motions of the
transporting means, automatically making a record of said effects of
said anomalies as the instrument responds thereto, identifying for
subsequent examination the terrain indicated as containing said
anomalies, and geophysically interpreting the cumulative information
thus obtained."
The detecting device defined by the claims may include a means for
generating and directing electric wave impulses, the reflections of which
are recorded as detected and disclosing valuable deposits lying beneath
the surface of the area surveyed. The wave generator described in the
specification and accompanying drawings consists of an ultra high frequency
oscillator connected to a resonator or wave guide capable of projecting
the waves in any desired direction, preferably in the form of a compact,
narrow beam. As stated in appellants' brief:
"The detecting instrument, its automatic stabilizing means, and the
automatic recording device are mounted in the craft and operatively
interconnected. The craft is then flown or sailed in one or more
courses over the area being explored with constant recording of the
effects of the electric and/or magnetic conditions encountered * * *.
The recorded data thus obtained is interpreted by procedures known
to geophysicists "the result of the whole survey enabling the
operator to determine the existence, location, length, width,
outline, depth beneath the earth's surface and bodily thickness of
the sought for deposit.'" [Italics quoted.]
Obviously the coverage of the area selected to be thus surveyed can be
completed more rapidly than if the transportation of the claimed apparatus
were taking place on the ground. The practical, commercial advance over
the prior art which appellants rely upon for patentability is quoted in
the following excerpt from the record:
" * * * Its merit is contrasted with prior activities in this art may
be illustrated by noting that, some time ago, one of the applicants
in an helicopter plane with an operator explored an area in Canada of
several square miles, which area had previously been explored by a
geophysicist in the employ of a very large and well known mining
concern, the previous exploration of the area being conducted by modern
ground methods. This previous exploration required the services of
eight men for seventy days. Applicant in the helicopter did the same
work in one hour and obtained substantially identical results. Maps
exhibiting these two explorations will be submitted to the examiner
if he desires to see them."
However, appellants did not establish the facts hereinbefore asserted by
a proper showing in the record. That is an essential requirement of the
patent law, as stated in the recent case of Blanchard v. Ooms,
80 U.S.App.D.C. 400, 153 F.2d 651, certiorari denied 326 U.S. 715,
67 S.Ct. 46, 91 L.Ed. 621.
The principal reference, the patent to Hull, relates more particularly to
improved methods and apparatus for detecting and measuring intensities and
anomalies in the earth's magnetic fields, such as those produced by the
presence of mineral or oil deposits or metallic bodies, etc. The apparatus
may be mounted on a moving vehicle, such as an aircraft or boat, which may
be "employed for the location of submerged undersea craft." Hull describes
the use of an instrument to detect the investigated anomalies, while the
supporting craft is stationary or in motion. Hull also describes a gyroscope
which, as in the appealed claims, functions as a stabilizing means for the
instrument as it is moved through the magnetic field.
The board affirmed the examiner's rejection of claims 99 through 106 as
directed to an old combination of elements disclosed in the patent to Hull.
We are unable to disagree with that decision. Appellants' suggestion that
Hull's use of an aircraft for transporting that apparatus and its operator
is confined merely to the location of undersea craft is without merit, as
are the suggestions by appellants that Hull's claims are limited solely to
a small area; that his device does not describe making a record; and that
a line of patentable distinction, as defined by dependent claims 105 and
106, must be drawn here between "electric" and "magnetic" responses.
It is observed that appellants in their specification disclose certain of
their measurements may also be made from balloons, kites, or the like, but
point to no unusual advantages for any particular type of maneuverable
fluid supported craft. Moreover, the British patent to Machts provides
a geographical research method:
" * * * wherein a detection apparatus having an antenna is moved over
a chosen path and is adapted to give substantially continuous
indications in the form of oscillograph diagrams of the intensity
and/or direction of the local electric fields, and means being
arranged to record automatically such indications when desired,
further means being also arranged for indication simultaneously of
the position of the apparatus on the chosen path when such records
are being made, the results of such records affording an indication
of the position and nature of a local disturbance in the electric
field and therefore of the position of a local subterranean
irregularity."
The Heiland article mentions the use of a zeppelin, an airship or balloon,
which has the same hovering characteristics as the helicopter defined by
claim 102, and the Heiland text discloses the use of a submarine in
geophysical surveying, as called for by claim 103. Claim 104, which adds
the limitation to claim 99 of gyroscopically controlled means for
stabilizing the detecting instrument, was rejected by the board as
being unpatentable over Hull.
Appellants concede in their brief that "Hull does say that the detecting
soil is positionable by a gyroscope so as to maintain it in a predetermined
direction." They argue, however, that their claimed control is patentably
distinct from the disclosure of Hull, because Hull's control is employment
of the conventional automatic effected by a pair of magnetometer coils
which control the gyroscope. That contention is without merit. A prior
art patent is a good reference not only for what it discloses by way of
direct anticipation but also for what it suggests that is not patentably
distinct therefrom to any person skilled in the art.
Claims 107 to 113 differ essentially from claim 99 in that the detecting
means defined by this group of claims embodies "means for projecting to
the earth ultra high frequency electric wave impulses, and means also
carried by the craft for receiving and recording said waves as reflected
by said anomalies." In other words, these particular claims contain not
only the same combination defined by claim 99, but also include specific
details with respect to the character of the detecting instrument. The
claims stand rejected, among other grounds, as unpatentable over the
disclosure of the patent to Hart.
Hart's disclosure relates to the measurement of distance by the use of
electromagnetic waves and is associated with a device applicable from
the ground or from different heights in an aircraft for accurately
locating the position of the object being observed on land or at sea.
The Solicitor for the Patent Office correctly points out that Hart
projects the same type of impulses toward the area surveyed by the
operator in his plane, that the apparatus employed by Hart includes
a receiver for the reflection of the impulses, and that, whatever other
purpose Hart had in mind, his device would operate to indicate geological
anomalies. It is true that there is no element disclosed by Hart to
interpret the results on the receiving oscilloscope, but it is fundamental
that a structural anticipation disclosed by a reference is sufficient,
although the functions of the two devices are different. In re Griswold,
152 F.2d 1014, 33 C.C.P.A., Patents, 799. The stabilizing feature involved
here is not specifically disclosed by Hart but that function might well
be accomplished, as suggested by the board, by care of the operator in
piloting the plane, as would the pilot or gyroscopic stabilizing apparatus.
The decision of the board, as well as the brief for the Solicitor of the
Patent Office, has devoted several printed pages of text to the specific
details with respect to the character of appellants' detecting instrument,
all of which definitely establish that those details do not singly or
collectively constitute a patentable variation over the disclosure of
Hart. Accordingly, we deem it unnecessary to prolong this opinion by the
further discussion of the unpatentability of this group of claims.
All of the steps defined by the limitations of claim 114, save one, as
properly noted by the board, would inherently be performed in the normal
operation of the Hull apparatus. The excepted step, "identifying for
subsequent examination the terrain indicated as containing said anomalies",
involves no patentable variant from the disclosures of the art of record.
The dropping of markers, the taking of photographs, the transportation of
the apparatus at different heights, as defined by claim 115, and of
determining the point of strongest effect of the anomaly and the limits
of such, as defined by claim 116, appear to be the obvious manner of
carrying out the Hull process and define nothing inventive thereover.
The final limitation of claims 114 to 116, which calls for "interpreting
the cumulative information thus obtained", involves a purely mental step
which can nowise lend patentability to the claims. In re Shao Wen Yuan,
188 F.2d 377, 38 C.C.P.A., Patents 967.
A careful analysis of the facts and law applicable thereto clearly
establishes that no patentable subject matter is defined by the appealed
claims, and the decision of the Board of Appeals is accordingly affirmed.
Affirmed.