Ex Parte Jones et al

Patent Trial and Appeal Board

Dec 12, 2017

14344842 (P.T.A.B. Dec. 12, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/344,842 03/13/2014 Christopher M. Jones 7523.1258US01 7291
27683 7590 12/14/2017
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
ISLAM, MOHAMMAD K
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER M. JONES,
MICHAEL T. PELLETIER, and MARK PROETT
Appeal 2018-000068
Application 14/344,842
Technology Center 2800
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1—31 under 35 U.S.C. § 101. Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification filed
Mar. 13, 2014 (“Spec.”); Final Office Action mailed Nov. 28, 2016 (“Final”);
Appeal Brief filed May 10, 2017 (“Appeal Br.”); Examiner’s Answer mailed
Aug. 11, 2017 (“Ans.”); and Reply Brief filed Oct. 3, 2017 (“Reply Br.”).
2 Appellants identify the real party in interest as Halliburton Energy Services, Inc.
Appeal Br. 2.
Appeal 2018-000068
Application 14/344,842
The invention relates to measuring an adsorbing chemical in downhole
fluids. Spec., Title. During the drilling and completion of oil and gas wells,
samples are taken from within the wellbore to determine various formation
properties. Id. ^ 2. In “tools for measuring or capturing formation fluids with
adsorbing or corrosive chemicals, the adsorbing chemical interacts and reacts with
the tool itself.” Id. 131. Because the actual concentration of the chemical in a
pristine reservoir fluid is changed by tool interaction, the measurement of the
chemical is not representative of its concentration within a reservoir fluid. Id. 134.
According to the Specification, this inaccuracy is problematic because “[t]he
acquisition of accurate data from the wellbore is critical to the optimization of
hydrocarbon wells.” Id. ^ 2. The invention provides a model or simulation that
describes chemical-tool interaction and correlates measured to actual chemical
levels in a reservoir fluid. Id. ^ 41. Use of the model or simulation allows a
sampling or measurement job to be modified in real time. Id.
In traversing the Examiner’s rejection, Appellants argue claims 1—31 as a
group. See generally, Appeal Br. 3—9. Accordingly, we decide the appeal as to
claims 1—31 on the basis of claim 1 alone. See 37 C.F.R. § 41.37(c)(iv). For
reference, claim 1 is reproduced below:
1. A method of sampling fluids including an adsorbing chemical
in a subterranean reservoir comprising:
modeling a chemical interaction between an adsorbing chemical
and a downhole tool;
applying the model to a measurement of the adsorbing chemical
from a downhole fluid sampled by the tool; and
adjusting the measurement in response to applying the model.
Appeal Br. 10.
2
Appeal 2018-000068
Application 14/344,842
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014)
(“Alice”) identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According to
Alice step one, “[w]e must first determine whether the claims at issue are directed
to a patent-ineligible concept,” such as an abstract idea. Id. at 2355. The second
step of the Alice framework is “a search for an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible concept]
itself.’” Id. (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)).
Alice Step 1: Is claim 1 directed to a patent-ineligible concept?
The Examiner determines claim 1 is directed to a patent-ineligible concept,
namely, the abstract idea of organizing information through mathematical
correlations (the claim 1 modeling and applying steps) and comparing data to
determine a risk level (the claim 1 adjusting step). Final 5—6. The Examiner
contends “the claims do not go beyond requiring the collection, analysis, and
updating [of] measurements by an algorithm in a particular field, stating those
functions in general terms .... [T]he claims[] defin[e] a desirable information-
based result and [are] not limited to inventive means of achieving the results.”
Ans. 3^4 (citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016) ^Electric Power Group”)).
Appellants argue the claims are directed to more than “mere patent ineligible
mathematical relationships, . . . [and] in fact provide improved computer functions
not previously provided by the prior art (as evidenced by the fact that all art
rejections have been overcome).” Appeal Br. 5; see also id. at 4 (arguing the
claims are not directed to a patent-ineligible concept “because, at the least, they are
3
Appeal 2018-000068
Application 14/344,842
directed to improvements in computer-related technology”) (citing McRo, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (“Mcito”));
Reply Br. 4 (arguing the improved measurement of the invention “enables the
computer to provide an improved measurement (i.e., improved functionality)
through use of a novel algorithm”). Appellants assert that
just as in the McRo case, the claimed invention improves upon
computer-related technology in the oil and gas industry and the
specification supports this assertion. The prior art failed to provide
the ability to account for chemical adsorption into the downhole tool
during measurement calculations, and the present claimed invention
now provides this processing ability. Therefore, just as the claims in
the McRo case were found patent eligible, the present claims should
be found patent eligible at least for this reason.
Appeal Br. 5.
Claim 1 recites a method of sampling fluids that includes the steps of
modeling, applying, and adjusting. Claim 1 does not explicitly recite the use of a
computer to perform these steps, nor does claim 1 recite a specific algorithm.
Appellants have not directed us to, nor do we find, any disclosure in the
Specification that supports a narrow interpretation of claim 1 as requiring the use
of a computer or a particular algorithm. Because Appellants’ arguments rely on
limitations that are not present in claim 1, we are not persuaded that the Examiner
erred in determining claim 1 is directed to an abstract idea. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the outset
because,. . . they are not based on limitations appearing in the claims . . . A)?Alice
Step 2: Does claim 1 contain an inventive concept sufficient to
transform the nature of the claim into a patent-eligible application?
3With respect to Appellants’ reliance on the absence of a rejection under 35 U.S.C.
§§102 and 103 as supporting its contention that the claims are not directed to an
abstract idea, see Appeal Br. 5 (“the claims . . . provide improved computer
functions not previously provided by the prior art (as evidenced by the fact that all
art rejections have been overcome)”), we note that “[t]he question ... of whether a
particular invention is novel is wholly apart from whether the invention falls into a
category of statutory subject matter.” Diamond v. Diehr, 450 U.S. 175, 190 (1981)
(internal quotation marks and citation omitted).
4
Appeal 2018-000068
Application 14/344,842
The Examiner determines the claims are not directed to a patent-eligible
application of the abstract idea because the claims do no more than recite a
“generic system of monitoring drilling and completion of oil and gas wells system
[and] evaluating the production capabilities of formations . . . Final 10-11;
Ans. 7.
Appellants argue that, even assuming claim 1 is directed to an abstract idea,
the meaningful limitations are significantly more, thus rendering the claim patent-
eligible. Appeal Br. 6. Appellants argue, more specifically, that
the claims provide improvements to the oil and gas industry . . . ,[4]
Moreover, the claims recite features which go well beyond what is
well-understood, routin[e] and conventional in the field. The prior art
fails to teach any method by which to correct for the adsorption
chemical/downhole tool interaction in adsorption analysis. Moreover,
the measurements are adjusted (i.e., transformed) to the corrected
measurement, as claimed. Accordingly, the claims meet the
“significantly more” test [of Alice], and the rejection should be
withdrawn.
Id. at 7. The Examiner, in response, asserts that the step of “adjusting the
measurement in response to applying the model” (claim 1) “merely presents] the
results of collecting and analyzing information,” Ans. 13, and is insufficient to
transform the nature of the claim into a patent-eligible application, see id. (citing
Electric Power Group). We agree with the Examiner that applying results
obtained by collecting and analyzing information to the particular technological
environment of measuring the concentration of a chemical in a reservoir fluid, as
recited in claim 1, “is, without more, insufficient to transform [claim 1] into [a]
4Appellants also argue the claims provide “improvements to the functioning of the
computer itself.” Id. at 7. As explained above, claim 1 does not require a
computer, therefore, we do not address this argument since it is not commensurate
in scope with claim 1.
5
Appeal 2018-000068
Application 14/344,842
patent-eligible application^ of the abstract idea . . . Electric Power Group, 830
F.3d at 1354; see also Parker v. Flook, 437 U.S. 584, 594—95 (1978) (“As the
Court of Customs and Patent Appeals has explained, ‘if a claim is directed
essentially to a method of calculating, using a mathematical formula, even if the
solution is for a specific purpose, the claimed method is nonstatutory. (quoting
In re Rickman, 563 F.2d 1026, 1030 (1977))).
Appellants’ argument that “the claims ... do not seek to preempt the use of
any judicial exception” (Appeal Br. 7) has been fully addressed by the Examiner
and is not persuasive for the reasons stated in the Answer (see Ans. 13—14).
Appellants’ remaining arguments are based on alleged improvements in computer
functionality provided by the invention. See generally Appeal Br. 4—8; Reply
Br. 3—5. As explained above, these arguments are not persuasive because they are
not commensurate in scope with the claims.5
Accordingly, we sustain the Examiner’s rejection of claims 1—31 under
35U.S.C. § 101.
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
5Appellants rely heavily on the Court’s decision in McRo in support of their
contention that the claims are eligible for patentability under 35 U.S.C. § 101.
However, as acknowledged by Appellants, the claims in McRo were directed to
improvements to computer functions. See Reply Br. 3. Accordingly, we do not
view the decision in McRo as particularly relevant to the issue of whether claim 1,
which does not recite a computer, is eligible for patentability under 35 U.S.C.
§101.
6