Ex Parte Li et alDownload PDFPatent Trials and Appeals BoardJun 5, 201914381400 - (D) (P.T.A.B. Jun. 5, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/381,400 08/27/2014 Chen Li 138627 7590 06/07/2019 Gilliam IP PLLC (Halliburton) 7200 N. Mopac Suite 440 Austin, TX 78731 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. 164.2012-IP-064324 Ul US 1433 EXAMINER DELOZIER, JEREMY A ART UNIT PAPER NUMBER 2857 NOTIFICATION DATE DELIVERY MODE 06/07/2019 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): uspto@gilliamip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte CHEN LI, and CHUNG CHANG 1 Appeal2019-003159 Application 14/381,400 Technology Center 2800 Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and JOHN P. PINKERTON, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, Halliburton Energy Services Inc. is the real party in interest. App. Br. 3. Appeal2019-003159 Application 14/381,400 INVENTION The invention is directed to a simplified model of an acoustic logging tool, which is used as part of the evaluation of geological formations. The simplified model represents the acoustic logging tool structure using concentric cylindrical shells in a coaxial configuration. See generally Specification 18-21. Claim 1 is illustrative of the invention and is reproduced below. 1. A method of modeling an acoustic logging tool, compnsmg: establishing a first cylindrical shell representing an interior tubular portion of an acoustic logging tool, the interior tubular portion including apertures; establishing a second cylindrical shell located concentrically outside the first cylindrical shell, the second cylindrical shell representing a acoustically- isolating portion of the acoustic logging tool, including: establishing a model density and a model compressional wave propagation velocity of the second cylindrical shell using information about the acoustically-isolating portion of the acoustic logging tool; and establishing a model shear wave propagation velocity of the second cylindrical shell as zero or about zero; and determining information indicative of a flexural wave propagation velocity with respect to acoustic frequency of the acoustic logging tool using the acoustic logging tool model including the first and second cylindrical shells. 2 Appeal2019-003159 Application 14/381,400 EXAMINER'S REJECTION2 The Examiner rejected claims 1 through 20 under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final Act. 2-7. 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 rejection of claims 1 through 20 under 35 U.S.C. § 101. 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: "[l]aws of nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank Int'!, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo 2 Throughout this Decision we refer to the Appeal Brief filed August 8, 2018 ("App. Br."); the Reply Brief filed March 11, 2019 ("Reply Br."); Final Office Action mailed January 12, 2017 ("Final Act."); and the Examiner's Answer mailed January 11, 2019 ("Ans."). 3 Appeal2019-003159 Application 14/381,400 and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 ( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection 4 Appeal2019-003159 Application 14/381,400 of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The United States Patent and Trademark Office "USPTO" recently published revised guidance on the application of§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Guidance"). Under that guidance, we first determine whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and 5 Appeal2019-003159 Application 14/381,400 (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev. 08.2017, Jan. 2018)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Guidance. ANALYSIS The Examiner determines the claims are not patent eligible as they are directed to a judicial exception without reciting significantly more. Final Act. 3-7. Specifically, the Examiner determines the claims are directed to an abstract idea stating that the claims: describe the concepts of collecting and comparing known information, as well as organizing information through mathematical correlations, which corresponds to concepts identified as abstract ideas by the courts. Please see Synopsys, Inc. v. Mentor Graphics Corporation for a court case containing similar types of claim language wherein a novel abstract idea is still an abstract idea. Additionally, the claims are analogous to the case: Diamond v. Diehr, 450 U.S. 175 (1981 ). (Federal Register page 74626, second column) in that the claims pertain to mathematical relationships, e.g.[,] abstract 6 Appeal2019-003159 Application 14/381,400 ideas. In this case, creating mathematical models of real world systems as evidenced in the specification, is called an abstract idea. In Diehr, they did something with the info, however in this case, nothing is being done with the information. Final Act. 3. Further, in response to Appellants' arguments in the Appeal Brief, the Examiner states the claims recite "a purely abstract step in the modeling process, not a real-world step" and finds that the claimed invention is "merely a better model which is run on a conventional computer ( which acts as a tool) [and] not a better way of using a computer." Answer 10. Appellants argue based upon the 2019 Guidance, the claims do not recite an abstract idea as the claims do not fall into one of the groupings in the 2019 Guidance. Reply Br. 3-5. Specifically, Appellants argue that the claims do not recite a mathematical concept as they "do not recite any specific mathematical relationships, formulas, equations or mathematical calculations." Reply Br. 4. Appellants assert that the claims recite a model and as such are similar to the claim in Example 3 8 in the 2019 Guidance. Reply Br 4. Further, Appellants argue the claims do not recite methods of organizing human activity or a mental process. Reply Br. 4--5. We concur with Appellants that the claims do not recite an abstract idea within the groupings of the guidelines. As discussed supra, the Examiner finds the claims recite mathematical relationships. Final Act. 3, Answer 10. We disagree with the Examiner. The 2019 Guidance states that abstract ideas include mathematical concepts (mathematical relationships, mathematical formulas or equations and mathematical calculations). Independent claims 1, 14, and 15 do not recite a mathematical relationship, formula, or calculation; rather, they recite a model comprising two cylindrical shells and properties such as density and wave propagation 7 Appeal2019-003159 Application 14/381,400 velocity of the shells. Although the limitation of determining a flexural wave propagation velocity using the model may be based on mathematical concepts, the mathematical concepts are not recited in the claims. Thus, we disagree with the Examiner that the claims recite a mathematical concept and as such recite an abstract idea. Similarly, we do not find that the claims recite an abstract idea in the other two categories of abstract ideas discussed in the 2019 Guidance. We do not find the claims recite a mental process because the steps are not practically performed in the human mind. Further, the claims do not recite a certain method of organizing human activity such as a fundamental economic concept or commercial and legal interactions. Thus, we do not agree with the Examiner that the claims recite an abstract idea. Accordingly, we do not sustain the Examiner's rejection of independent claims 1, 14, and 15, and dependent claims 2 through 13 and 16 through 20, under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. DECISION We reverse the Examiner's rejection of claims 1 through 20 under 35 U.S.C. § 101. REVERSED 8 Copy with citationCopy as parenthetical citation