Li, Lilong et al.

Patent Trials and Appeals Board

Jan 23, 2020

14429254 - (D) (P.T.A.B. Jan. 23, 2020)

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.
14/429,254 03/18/2015 Lilong Li 2013-081924 U1 US 7888
142050 7590 01/23/2020
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
MAINI, RAHUL
ART UNIT PAPER NUMBER
2866
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LILONG LI,
MAGDALENA TRAICO SANDOR, and SONGHUA CHEN

Appeal 2019-002201
Application 14/429,254
Technology Center 2800
____________

Before LINDA M. GAUDETTE, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Halliburton
Energy Services, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The present application generally relates to “estimating subterranean
fluid viscosity based on nuclear magnetic resonance (NMR) data associated
with a subterranean region.” Specification, filed March 18, 2015 (“Spec.”),
¶ 1.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method of determining subterranean fluid viscosity
based on nuclear magnetic resonance (NMR) logging data,
the method comprising:
accessing a viscosity model that relates a subterranean
fluid viscosity variable to an apparent hydrogen index
variable, wherein a relaxation time variable is not used in said
viscosity model;
computing an apparent hydrogen index value for a
subterranean region based solely on nuclear magnetic
resonance (NMR) logging data acquired from the
subterranean region; and
computing a subterranean fluid viscosity value for the
subterranean region based on the viscosity model and the
apparent hydrogen index value.
Appeal Brief, filed Sept. 6, 2018 (“Appeal Br.”), 17 (Claims App’x).
REJECTION
The Examiner maintains the following rejection: Claims 1–22 are
rejected for lack of subject matter eligibility. Final Action, dated April 16,
2018 (“Final Act.”), 7–15.
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DISCUSSION
Rejection 1. The Examiner rejected claims 1–22 as patent ineligible.
Id. The Examiner determined that the claims are directed to a judicial
exception to 35 U.S.C § 101 and do not claim “significantly more” than the
judicial exception. Id.
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. 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. Kappos, 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 mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). If
the claim is “directed to” an abstract idea, we turn 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
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‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221. “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.
In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). 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) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)).
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.
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Step 1
Section 101 provides that “[w]hoever 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.” 35 U.S.C. § 101.
Initially, we determine that claims 1–8, 19, and 20 recite a “method.”
A method is considered a process under section 101. See 35 U.S.C.
§ 100(b). Claims 9–14, 21, and 22 recite a “system.” These claims require
at least a nuclear magnetic resonance measurement system, a data processing
apparatus, and a memory storing computer-readable instructions. Appeal
Br. 18 (Claims App.). Accordingly, we regard the claims as directed to a
“manufacture” under 35 U.S.C. § 101. Claims 15–18 are to a “non-
transitory computer-readable medium.”2 Media of this type may also
qualify as a “manufacture” under 35 U.S.C. § 101. See In re Beauregard, 53
F.3d 1583, 1584 (Fed. Cir. 1995).
Accordingly, under Step 1 of our analysis, the claims are to processes
or manufactures that fall within a statutory class of invention.
Step 2A, Prong 1
Under Step 2A, Prong 1 of the Guidance, we must determine whether
claim 1, being directed to a statutory class of invention, nevertheless recites
a judicial exception.

2 Claims 16–18 are rejected as directed to “transitory” matter which does not
fall within any statutory category. Final Act. 13–14 (citing In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007)). We do not accept the Examiner’s
reasoning in this regard as these claims incorporate each of the limitations of
claim 15, from which they depend, including the requirement that the
computer readable medium be “non-transitory.” See 35 U.S.C. § 112(d).
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In finding claim 1 to be ineligible, the Examiner determines as
follows:
Claim 1 is directed to a method, which is directed to
accessing a mathematical model, computing an apparent
hydrogen index, and computing a subterranean fluid viscosity
value, which are all based on nuclear magnetic resonance data[.]
Claim 1 is directed to an abstract idea because it is directed
to the fundamental process of using mathematical
formulas/models to determine viscosity. A mathematical
formula/model is a patent-ineligible abstract idea. Alice Corp.,
134 S. Ct. at 2355, citing Parker v. Flook, 437 U.S. 564, 589
(1978) (“Reasoning that an algorithm, or mathematical formula,
is like a law of nature, Benson applied the established rule that a
law of nature cannot be the subject of a patent.”).
Final Act. 8. The Examiner further finds that the process of claim 1 can be
performed in the human mind. Id.
Appellant does not clearly argue that claim 1 (or any claim) does not
“recite” an abstract step. See Appeal Br., generally.
Claim 1 requires “accessing a viscosity model.” The Specification
teaches as follows regarding viscosity models:
Process 400 includes accessing a viscosity model that relates a
subterranean fluid viscosity variable to an apparent hydrogen
index variable (402). For example, the model may include an
equation (e.g., ƞ = aHI2app + bHIapp + c, or another equation) or
a database that specifies a relationship (e.g., a linear relationship,
a polynomial relationship, etc.) or correlation among respective
variables that represent the subterranean fluid viscosity, the
apparent hydrogen index, and others.
Spec. ¶ 41. Thus, the viscosity model “relates a subterranean fluid viscosity
variable to an apparent hydrogen index variable.” Id. That is, the model
determines a mathematical relationship between fluid viscosity and apparent
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hydrogen index. This recites a mathematical concept, which is abstract. See
Guidance 52.
Claim 1 further requires “computing an apparent hydrogen index
value” and “computing a subterranean fluid viscosity value.” Appeal Br. 17
(Claims App.). The Specification teaches that “the hydrogen index of a
particular substance can be calculated by finding the ratio of the
concentration of hydrogen atoms per volume (e.g., cm3), to that of pure
water to a given temperature (e.g., 75°C).” Spec. ¶ 30. The Specification
additionally teaches that “in some cases, a fitted function 304a-d can be a
quadratic equation in the form:
ƞ = aHI2app + bHIapp + c
where ƞ is a variable representing the subterranean fluid viscosity.” Id.
¶ 38 (emphasis added). In view of such teachings, these “computing” steps
fall within the category of “mathematical formulas or equations,
mathematical calculations,” i.e., mathematical concepts, which are abstract
ideas. See Guidance 52.
Accordingly, we determine that claim 1 (and its dependent claims 2–
8, 19, and 20) recites abstract subject matter that falls within a judicial
exception to § 101. As the system claims (claims 9–14, 21, and 22) and
Beauregard claims (claims 15–18) include the same limitations, we
additionally find that these claims recite a judicial exception to § 101.
Step 2A, Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept. See, e.g.,
Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S. 175 (1981)).
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Appellant treats the claims collectively, arguing that
when viewed as a whole the Claims are directed to a concrete
concept of unconventionally determining a viscosity of a
subterranean region based on a viscosity model and an apparent
hydrogen index value, wherein the viscosity model does not use
a common variable such as a relaxation time variable, and the
apparent hydrogen index value is computed based solely on
NMR logging data.
Appeal Br. 8.
The Guidance provides that a claim that integrates a judicial exception
into a practical application is not “directed to” the judicial exception.
Guidance 54. One evaluates integration into a practical application by
identifying whether there are any additional elements recited in the claim
beyond the judicial exception and evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. Id. at 54–55. Here, each step of claim
1 is abstract. Appellant does not present argument regarding any specific
tangible claim limitation in the context of integration into a practical
application. See Appeal Br. 7–9. Accordingly, Appellant has not shown any
“additional elements” that incorporate the abstract steps into a practical
application.
In its Reply Brief, Appellant argues that the Examiner “over-
generalizes the Claims and ignores claim terms that impose meaningful
limits on the judicial exception.” Reply Br. 2. Appellant then argues that
the Examiner does not accord sufficient weight to the details of the
subterranean model, the apparent hydrogen index value and subterranean
fluid viscosity value computations. Id.
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Appellant’s argument lacks merit as it concerns the details of an
abstract step, not any additional (nonabstract) element. Accordingly, there is
no showing of error applicable to Step 2A, prong 2 of the analysis for any
claim.
Step 2B
Next, we determine whether the claim includes additional elements
that render the claims patent eligible because the additional elements provide
significantly more than the judicial exception. Alice, 573 U.S. at 217–18
(quoting Mayo, 566 U.S. at 72–73). In particular, we consider whether any
additional elements or combination of elements add a specific limitation or
limitations that transform the subject matter of a claim into a patent eligible
“inventive concept.”
As above, each step of the process of claim 1 is abstract in nature,
accordingly, there are no “additional elements” to provide significantly more
than the judicial exception. This is also true of method claims 2–7, 19, and
20 (each of which adds mathematical step limitations) which depend from
claim 1. Claims 15–18 are similar to claims 1–4 apart from the “non-
transitory computer-readable medium” limitation which is generic in nature.
See Spec. ¶ 53; Fig. 7. Accordingly, we determine that claims 1–7 and 15–
20 do not include additional limitations that provide significantly more than
the judicial exception.
Appellant presents separate argument with regard to claims 8–14.
Appeal Br. 13–14. Claim 8 includes a limitation requiring “a downhole
NMR logging instrument” and claims 10–14 require “a nuclear magnetic
resonance (NMR) measurement system.” Id. at 13. Appellant argues that
these machines “implement important steps of the respective method and
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system as they acquire the NMR logging data that provides the sole basis for
computing the apparent hydrogen index.” Id. The Examiner finds that “the
NMR measurement system as claimed is generic, well-known and has a
conventional and routine functionality in this technology, e.g. downhole
NMR logging instruments function to log downhole NMR data; thus,
nothing significantly more is added.” Final Act. 3–4; Answer 11. Appellant
does not specifically dispute that the recited measurement devices are
conventional. See Appeal Br., generally.
Accordingly, we determine that Appellant has not shown error in the
Examiner’s conclusion that “the down hole NMR measurement logging
instrument of Claim 8, and the nuclear magnetic resonance measurement
system of Claim 9, are well-known, routine and conventional in the art and
do not amount to significantly more than the abstract idea.” Answer 11; see
also id. at 13.
Although not argued by Appellant, we further note that independent
claim 9 (a system claim) requires “a computing system,” a “data processing
apparatus,” and a “memory storing computer-readable instructions” in
addition to a “nuclear magnetic resonance (NMR) measurement system.”
Appeal Br. 18 (Claims App.). We consider these additional elements both
individually and in combination to determine whether they amount to
significantly more than the identified abstract elements. Guidance 56.
When considered individually, computing systems, data processing
apparati, and computer memory are well-understood, routine, conventional
activities previously known to the industry. Spec. ¶¶ 2, 57, 59. Even when
considered as an ordered combination, the additional elements perform as
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expected and are merely well-understood, routine, conventional components
commonly used in the industry. Id.
Appellant additionally argues that the present claims do not preempt
the use of the judicial exceptions (abstract steps) at issue. Appeal Br. 14–15.
Appellant cites the PTO’s July 2015 Update, Appendix 1 in support of its
argument that the claims do not preempt the use of “the alleged abstract
idea” and are therefore directed toward patent eligible subject matter. Id.
Appellant cites to Example 26 which concerns a claim to an internal
combustion engine comprising “an air intake manifold, an exhaust manifold,
a combustion chamber, a throttle position sensor, an exhaust gas
recirculation valve, and a control system. July 2015 Update: Subject Matter
Eligibility, 80 Fed. Reg. 45429 (July 30, 2015) (hereinafter “July 2015
Guidance”), App. 1 at 20. The July 2015 Guidance provides that “the
claim’s description of an internal combustion engine having manifolds,
valves, and sensors forming a specific structure that uses the control system
to optimize exhaust gas recirculation makes it clear that the claim as a whole
would clearly amount to significantly more than any recited exception.” Id.
Appellant additionally cites to Example 2 of the PTO’s 2014 Interim
Guidance on Patent Subject Matter Eligibility (“2014 Interim Guidance”).3
Appeal Br. 15. The 2014 Interim Guidance teaches that a robotic arm
having a sensor and a control system that uses information from the sensor
to adjust the velocity of the end effector of the arm to achieve smooth
motion is patent eligible. 2014 Interim Guidance 32.
The examples cited by Appellant differ from the instant claims due to
the manner in which the multiple nonabstract limitations function as an

3 79 Fed. Reg. 74618–33 (Dec. 16, 2014).
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ordered combination. The present claims have either no nonabstract
elements or a limited number of conventional nonabstract elements specified
at a high level of generality.
Further, the Federal Circuit has held that “the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Accordingly,
Appellant has not shown error on this basis.
CONCLUSION
The Examiner’s rejection is affirmed.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Subject Matter Eligibility 1–22
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED