Ex Parte Samworth

Patent Trial and Appeal Board

Mar 4, 2019

13548725 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/548,725 07/13/2012
90116 7590 03/06/2019
Weatherford/Precision
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
James Roger Samworth
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.
205-0358US (P49018US) 9967
EXAMINER
CROHN, MARK I
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
houstonpatents@blankrome.com
smcdermott@blankrome.com
acollins@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ROGER SAMWORTH 1
Appeal 2018-001104
Application 13/548,725
Technology Center 2800
Before BRADLEY R. GARRIS, DONNA M. PRAISS, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1 and 3-15. We have jurisdiction under 35 U.S.C.
§ 6.
We REVERSE.
1 Reeves Wireline Technologies Limited is identified as the real party in
interest (App. Br. 3).
Appeal 2018-001104
Application 13/548,725
Appellant claims a method of determining the true formation
resistivity Rt of an invaded formation surrounding a borehole wherein
the formation is invaded by drilling fluid and the true formation
resistivity Rt is representative of the resistivity of the formation
undisturbed by the invasion (independent claims 1 and 13). The method
comprises operating a logging tool in the invaded formation in order to
generate two resistivity log measurements (id.). The method further
comprises combining a deeper and a shallower of the two resistivity log
measurements in accordance with a non-linear combination algorithm
that is modulated by a parameter whose value is varied in dependence on
previously obtained comparisons between deep and shallow log
measurements forward modeled from sample data (id.). The step of
combining in accordance with the non-linear combination algorithm
comprises calculating the true resistivity Rt in accordance with a certain
equation-defined expression (dependent claim 4).
Further details of the claimed method are set forth in representative
claims 1 and 4. A copy of these claims, taken from the Claims Appendix
of the Appeal Brief, appears below.
1. A method of determining true formation resistivity Rt of an
invaded formation surrounding a borehole, the formation invaded by
drilling fluid, the true formation resistivity Rt representative of the
resistivity of the formation undisturbed by the invasion, the method
compnsmg:
providing comparisons between deep and shallow log
measurements forward modelled from sample data;
operating a logging tool in the invaded formation by directly
injecting electric current into the invaded formation and generating
two resistivity log measurements based on return of the injected
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Application 13/548,725
current, each resistivity log measurement having a differing depth of
penetration of the invaded formation,
combining a deeper and a shallower of the two resistivity log
measurements in accordance with a non-linear combination algorithm
that is modulated by a parameter by varying a value of the parameter
in dependence on the provided comparisons between the deep and
shallow log measurements forward modelled from the sample data;
and
generating a modified log output from the results of the
combination, the modified log output indicating the true formation
resistivity Rt of the invaded formation relative to location in the
borehole.
4. A method according to claim 1, wherein the step of
combining the deeper and the shallower of the two resistivity log
measurements in accordance with the non-linear combination
algorithm comprises calculating the true resistivity Rt in accordance
with an expression Rt= lOA(k* log (Deep)+ (1-k)*log (Shallow)),
wherein:
"Deep" represents output of a deeper of an array of at least two
current receiver electrodes in a resistivity tool;
"Shallow" represents output of a shallower of the array of the at
least two current receiver electrodes; and
k is the parameter and is selected for the invaded formation
under investigation.
The Examiner rejects claims 1 and 3-15 under 35 U.S.C. § 101
"because the claimed invention is directed to a judicial exception ...
without significantly more" (Final Action 9). Specifically, the Examiner
determines that "the claims belong to the statutory class of a process" but
that "the claims recite an abstract idea ... [and] pertain to a judicial
exception as mathematical concepts such as mathematical algorithms,
mathematical relationships, mathematical formulas, and calculations
without significantly more in the claims beyond those abstract ideas"
(id.).
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Application 13/548,725
Appellant argues, "even though the pending claims recite a
mathematical concept, additional steps of the pending claims transform
the claimed process into an inventive application of the mathematical
concept, thereby making the claims patent eligible because they improve
an existing technological process" (App. Br. 8 ( citing Alice Corp. v. CLS
Bank Int'l, 573 U.S. 208 (2014))). In particular, Appellant argues that
"the mathematical concept of claim 1 improves another technical field
(namely, formation logging), is applied or used with or by a particular
machine (namely, a logging tool), and confines claim 1 to a particular
useful application (namely, determining resistivity of a formation)" (id.
at 11). According to Appellant, "[t]hese details amount to significantly
more than just a judicial exception and indicate that claim 1 is patent
eligible" (id.). Appellant argues that remaining independent claim 13
also is directed to patent eligible subject matter for the reasons given
with respect to claim 1 (id. at 13 ).
OPINION
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
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Application 13/548,725
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 ( Gottschalk v. 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 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); 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 176; 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
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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Application 13/548,725
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 ( quotation marks 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 PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). 2 Under the Guidance, we first look to
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
2 We emphasize that neither the Examiner nor Appellant had benefit of this
Guidance in advocating their respective positions concerning subject matter
eligibility.
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(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-
(c), (e}-(h)). 3
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 Guidance.
In applying the Guidance to the claims on appeal, we determine, like
the Examiner and Appellant, that each of independent claims 1 and 13
recites the abstract idea of a mathematical concept ( e.g., a mathematical
relationship). We also determine that these independent claims recite
additional elements that integrate the mathematical concept into a practical
application for the reasons explained below.
Appellant's Specification discloses that a known method for
determining resistivity of an invaded formation surrounding a borehole is
not suitable due to, for example, a need to log the borehole multiple times at
differing depths or a need to use variables that are not always available on a
real-time measurement basis (Spec. ,r,r 20-26). The Specification teaches
that Appellant discovered an equation-defined relationship wherein the true
3 The Examiner determines that certain claim elements are routine and
conventional (see, e.g., Ans. 13-16). This determination is not relevant to
steps (1) and (2) of the Guidance analysis. See Guidance.
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resistivity Rt of an invaded formation can be calculated rapidly in real time
(i.e., without the need to use an unavailable input variable) (id. ,r,r 78-80).
The equation includes a parameter k whose values are established for the
well under investigation in advance of logging operations via forward
modeling (id.). According to Appellant's Specification, "the method of the
invention offers significant improvements in the calculation of Rt and, in
particular, is highly suitable for determining Rt in real time" (id. ,r 87).
These Specification disclosures reflect that the mathematical concept
of the independent claims improves the technological process or method of
determining the true resistivity of an invaded formation without needing to
log the borehole multiple times at differing depths and without needing to
use a variable not available in real time. See MPEP § 2106.05(a). The
independent claims integrate the mathematical concept into a practical
application of the concept by specifically defining a method of determining
the true resistivity of a formation invaded by drilling fluid via an algorithm
modulated by a parameter, the value of which varies in dependence on
measurements forward modeled from sample data. Therefore, the claims do
not attempt to monopolize the algorithm itself but rather define a specific
method that employs the algorithm to achieve multiple improvements in the
technological process of determining true formation resistivity of an invaded
formation. See Diehr, 450 U.S. at 17 6 (1981) ("A claim drawn to subject
matter otherwise statutory does not become nonstatutory simply because it
uses a mathematical formula."); see also id. at 192 ("We view respondents'
claims as nothing more than a process for molding rubber products and not
as an attempt to patent a mathematical formula.").
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Appeal 2018-001104
Application 13/548,725
In summary, the independent claims recite a mathematical concept but
also recite additional elements that integrate the mathematical concept into a
practical application. Each of these independent claims as a whole applies,
relies on, or uses the mathematical concept in a manner that imposes a
meaningful limit on the mathematical concept, whereby the claims are more
than a drafting effort designed to monopolize the concept. For these
reasons, we ultimately determine that the independent claims, and
concomitantly the claims depending therefrom, define patent eligible subject
matter.
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 3-15 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
The decision of the Examiner is reversed.
REVERSED
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