Ex Parte Itkin et al

Patent Trial and Appeal Board

Jul 13, 2018

12426344 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/426,344 04/20/2009
48879 7590 07/17/2018
SCHLUMBERGER INFORMATION SOLUTIONS
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
Ilya Simon Itkin
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
94.0171 4641
EXAMINER
MCINTYRE, CHARLES AARON
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/17/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USDocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IIL YA SIMON ITKIN, SUBRAMONIAPILLA Y
VALLINA YAGAM SUBRAMONIAN, DALE MARVIN BLUE, and
STEPHEN CHELACK 1
Appeal2017-002890
Application 12/426,344
Technology Center 3600
Before ROBERT E. NAPPI, SCOTT B. HOWARD, and
JOYCE CRAIG, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 4, 9, 11, 13, 18, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Schlumberger
Technologies Corporation. Appeal Brief 3.
Appeal2017-002890
Application 12/426,344
INVENTION
Appellants' disclosed invention is directed to a method for retrieving
data from a database. See Abstract. Claim 1 is representative of the
invention and reproduced below.
1. A method for accessing a database comprising:
receiving, from a user, a query for oilfield data in the
database, wherein the query defines an operation to perform on
the oilfield data, and wherein the oilfield data is regarding an
oilfield entity;
determining, from an entitleable table, that the oilfield
data is entitleable;
obtaining an identifier of the user;
obtaining, with a processor and from an entitlement table,
a role in the entitlement table corresponding to the identifier of
the user;
obtaining, with the processor and using the role in the
entitlement table, a workflow identifier for a workflow having a
relationship between the oilfield entity and an oilfield;
obtaining, with the processor and using the workflow
identifier, a chasing rule that defines a source table
corresponding to a well within the oilfield, a target table
corresponding to the oilfield entity, and a traversal of a
hierarchy of tables according to the workflow from the source
table to the target table for obtaining of the oilfield data;
obtaining, with the processor, the oilfield data in the
database based on authentication that the oilfield data is
entitleable and that the user is entitled to view the oilfield data,
and by traversing the hierarchy of tables from the source table
to the target table to obtain the oilfield data; and
presenting the oilfield data to the user.
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Application 12/426,344
REJECTIONS AT ISSUE2
The Examiner rejected claim 1, 2, 4, 9, 11, 13, 18, and 20 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 3--4.
The Examiner rejected claims 1, 2, 4, 9, 11, 13, 18, and 20 under
35 U.S.C. § I03(a) for being unpatentable over Agarwal et al. (US 6,965,903
Bl, issued Nov. 15, 2005), Sandhu et al. ("Role Based Access Control
Models", Computer, 1996) and Wald (US 2006/0224637 Al, Oct. 5, 2006).
Final Act. 4--7.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). Although an abstract idea
itself is patent ineligible, an application of the abstract idea may be patent
eligible. Alice, 134 S. Ct. at 2355. Thus, we must consider "the elements of
2 Throughout this Decision we refer to the Appeal Brief filed March 28
2016, Reply Brief filed December 7, 2016, Final Office Action mailed
October 26, 2015, and the Examiner's Answer mailed October 7, 2016.
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Application 12/426,344
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (citing Mayo, 566 U.S. at 78-80). The
claim must contain elements or a combination of elements that are
"sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [abstract idea] itself." Id. (quoting Mayo, 566 U.S. at
72-73). The Federal Circuit has explained that, in determining whether
claims are patent-eligible under Section 101, "the decisional mechanism
courts now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision
that "examiners are to continue to determine if the claim recites (i.e., sets
forth or describes) a concept that is similar to concepts previously found
abstract by the courts." Id. at 1294 n.2.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's conclusion that the claims are directed to patent-ineligible
subject matter, however, Appellants' arguments have not persuaded us of
error in the Examiner's conclusion that the claims are obvious over the prior
art.
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Application 12/426,344
DECISION
Rejection under 35 U.S.C. § 101
Appellants argue on pages 7 through 10, of the Appeal Brief, that the
Examiner has failed to articulate a reasoned rational demonstrating that the
claim is directed to a judicial exception of an abstract idea. Further,
Appellants argue that the Examiner has failed to properly consider the
second step of the two part analysis set forth by the Court in Alice. App. Br.
10-13.
We concur with Appellants that the Examiner has not set for a
sufficient reasoned rationale as to why the claim recites an abstract idea.
The Examiner's rejection states:
[T]he claimed invention is directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Claims 1-2, 4, 9, 11, 13, 18, and 20
are drawn to a user looking up information, and if the user has
the right to the information, the information being presented to
the user ( e.g. request to access legal or medical records). The
role played by the computer is mere automation and thus the
claims are directed to an abstract idea (for instance, in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al .. the
court found that an "intermediated settlement" was a
fundamental economic practice, which is an abstract idea).
Final Act 3. The Examiner has repeated this statement in the Answer
as a response to Appellants' arguments. Answer 2-3. We do not
consider this to be a sufficient rationale because, as discussed above,
the Federal Circuit has said the decisional mechanism courts now
apply is to show that the claims are similar to those held to be abstract
by the courts. In this case, the Examiner has concluded that the
limitation "user looking up information, and if the user has the right to
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Application 12/426,344
the information, the information being presented to the user" is an
abstract concept without providing any analysis or comparison to
other cases where such concepts were considered abstract. 3 While
this may be an abstract concept, the Examiner has not presented
sufficient rationale to demonstrate that the claim is drawn to an
abstract concept. See MPEP 2106.04(a). Accordingly, we do not
sustain the Examiner's rejection under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 103
Appellants argue that the Examiner improperly found limitations of
claim 1 are directed to printed matter. App. Br. 13-16. Specifically,
Appellants argue that the Examiner's reliance on the printed matter doctrine
is improper as "oilfield data can and likely do communicate some
information, but the content within the oilfield data is not being claimed."
App. Br. 15. Appellants argue that the claims recite a hierarchy of tables
and the actual content of the oilfield data is not being claimed, and that the
limitations ignored by the Examiner are not directed to printed matter. App.
Br. 15-16. Further, Appellants argue that the Examiner improperly
recognized that the claims recite a functional relationship between the rest of
the claim, citing the limitations of i) "a workflow identifier for a workflow
having a relationship between an oilfield entity and an oilfield;" ii)
"traversal of a hierarchy of tables according to the workflow .. . ; " and iii)
"traversing the hierarchy of tables." App. Br. 17-18. Appellants argue
3 In as much as the Examiner's rationale cites to Alice as demonstrating that
"intermediated settlement" is an abstract concept, the Examiner has not
shown how, nor is it readily apparent, this is similar to the claims at issue in
this case.
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Application 12/426,344
that the limitations directed to oilfield data, oilfield entities, workflow, target
table and role, define how the hierarchy of tables is traversed and as such
show a functional relationship. App. Br. 18.
We are not persuaded of error by these arguments as we do not find
that the Examiner improperly ignored limitations of the claims. We
understand the Examiner to have correctly determined that terms "oil field
data " "role " "entitlement table " " workflow identifier " and "target table"
' ' ' '
are non-functional descriptive material, which properly construed are merely
titles given to the different types of data/claim elements and as such are not
afforded patentable weight. "[O]nce it is determined that the limitation is
directed to printed matter, one must then determine if the matter is
functionally or structurally related to the associated physical substrate, and
only if the answer is 'no' is the printed matter owed no patentable weight."
In re DiStefano, 808 F.3d. 845, 851 (Fed Cir. 2015). Here, contrary to
Appellants' arguments, the fact that the data is "oilfield data" does not
change the method, there are no claimed method steps dependent upon the
data being oilfield data. The method would not perform differently if the
data were water well data, or other property data. Further, Appellants'
Specification, in paragraph 10, states the methods of the system may be
performed on databases of other types of data.
Further, Appellants' arguments on page 17 and 18 of the Appeal
Brief, have not persuaded us that the Examiner ignored the functional
relationship between the i) "a workflow identifier for a workflow having a
relationship between an oilfield entity and an oilfield;" ii) "traversal of a
hierarchy of tables according to the workflow .. . ;" and iii) "traversing
the hierarchy of tables." The Examiner has made specific findings
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identifying portions of Agarwal, Sandhu, and Wald that teaches these claim
limitations. Final Act. 5---6. In making these findings the Examiner has
construed the non-functional descriptive terms generically, i.e. the claimed
"role" as being an "attribute", the claimed "oilfield entity" as being an
"specific entity" etc. Final Act. 5. Further, we note that the Examiner has
also found that the teachings Agarwal, Sandhu and Wald teach the elements
identified as non-functional descriptive material, e.g, role, entitlement tables
and oilfield data. Final Act. 4---6. Appellants' arguments directed to the
references merely provide a cursory summary of the references and do not
address the specific findings by the Examiner. App. Br. 19. As Appellants
have not specifically addressed and shown error in the Examiner's findings,
we are not persuaded of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 103. Accordingly, we sustain the Examiner's
rejection, under 35 U.S.C. § 103 of claim 1 and claims 2, 4, 9, 11, 13, 18,
and 20 grouped with claim 1.
DECISION
We affirm the Examiner's rejection of claim 1, 2, 4, 9, 11, 13, 18, and
20 under 35 U.S.C. § 101 for being directed to patent-ineligible subject
matter.
We reverse the Examiner's rejection of claims 1, 2, 4, 9, 11, 13, 18,
and 20 under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1, 2, 4, 9, 11,
13, 18, and 20 is affirmed. See 37 C.F.R. § 41.50(a)(l ).
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Application 12/426,344
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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