Sheng Fang

Patent Trials and Appeals Board

Mar 24, 2020

13230071 - (D) (P.T.A.B. Mar. 24, 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.
13/230,071 09/12/2011 Sheng Fang RES4-51713-US 9997
87884 7590 03/24/2020
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
EXAMINER
CASEY, LIAM R
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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@mktlaw.com
tthigpen@mktlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHENG FANG
Appeal 2018-007017
Application 13/230,071
Technology Center 2800
Before MONTÉ T. SQUIRE, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 7–12, 16–18, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 “Baker
Hughes, a GE company, LLC.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to “exploration for
hydrocarbons involving electrical investigations of a borehole penetrating an
earth formation.” Spec. ¶ 1. The invention relates to inductive measuring
tools where an antenna induces current through a rock formation and the
magnitude of the induced current is measured. Id. ¶ 3. Claim 1 is illustrative:
1. A method of estimating at least one parameter of
interest of an earth formation using an electromagnetic (EM)
tool, comprising:
conducting drilling operations to convey the EM tool in a
borehole penetrating the earth formation;
producing an electric current in the formation using a
transmitter on the tool;
measuring an electromagnetic transient response to the
current using a receiver on the tool in the borehole to obtain
electromagnetic information; and
estimating the at least one parameter of interest using the
electromagnetic transient information obtained using the
receiver and a model of transient electromagnetic responses in
the earth formation dependent on a depth of the receiver when
the electromagnetic transient information was obtained,
wherein the model approximates the earth formation as two thin
conductive sheets below the earth surface comprising an upper
sheet representing an upper portion of the earth formation
above the tool and a lower sheet representing a lower portion of
the earth formation below the tool; and
controlling operations in the earth formation using the at
least one parameter.

2 In this Decision, we refer to the Final Office Action dated May 1, 2017
(“Final Act.”), the Appeal Brief filed January 30, 2018 (“Appeal Br.”), the
Examiner’s Answer dated April 18, 2018 (“Ans.”), and the Reply Brief filed
June 18, 2018 (“Reply Br.”).
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Appeal Br. 23 (Claims App.). The second independent claim on appeal,
claim 9, recites an apparatus with a processor configured to estimate
parameters similarly to claim 1. Id. at 25.

REJECTIONS
On appeal, the Examiner maintains an objection to Appellant’s July
17, 2015, amendment to the Specification. Final Act. 9; Ans. 2. The
Examiner also maintains (Ans. 2) the following rejections on appeal:
A. Claims 1, 3–5, 7–12, 16–18, and 21 under 35 U.S.C. § 112 as failing
to comply with the written description requirement. Final Act. 10.
B. Claims 9–12 under 35 U.S.C. § 112 as indefinite. Id. at 13
C. Claims 1, 3–5, 7–12, and 16–18 under 35 U.S.C. § 101 as being
directed to a judicial exception (abstract ideas). Id. at 14.
The Examiner has withdrawn all obviousness rejections under 35
U.S.C. § 103. Ans. 2.
OPINION
Amendments to the Specification. Appellant seeks our review of the
Examiner’s objection to an amendment of the Specification. Appeal Br. 5.
Typically, decisions an examiner makes during examination of a
discretionary, procedural, or nonsubstantive nature not directly connected
with the merits of issues involving rejections are reviewable by petition
under 37 CFR § 1.181 to the Director, not by appeal. In re Berger, 279 F.3d
975, 984‒85 (Fed. Cir. 2002). The Manual of Patent Examining Procedure
states that “[o]rdinarily, an objection is petitionable, and a rejection is
appealable” but also provides an exception: “when the objection is
‘determinative of the rejection’ the matter may be addressed by the Board.”
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MPEP § 1201 (9th ed. Rev. 08.2017, Jan. 2018). The MPEP further clarifies
that where “both the claims and specification contain new matter either
directly or indirectly, and there has been both a rejection and objection by
the examiner, the issue becomes appealable and should not be decided by
petition.” MPEP § 2163.06(II).
The appeal here exemplifies a rare circumstance where the Board
should address an objection.
Appellant seeks to amend the Specification’s paragraph 23 statement
that “M is an electric moment of transmitter coil 210” to instead state that
“M is the product between the magnetic moment of transmitter coil 210 and
the area of the receiver coil 220 times the number of turns of the receiver
coil 220.” Appeal Br. 5 (emphasis omitted); see also Ans. 2–3. The
Examiner objects to this amendment and, simultaneously, rejects claim 8 as
lacking written description support. Final Act. 9, 11–12. Claim 8 recites,
among other things, “M is a product between a magnetic moment of the
transmitter and an area of the receiver times the number of turns of the
receiver.” Appeal Br. 24 (Claims App.). Because the Examiner’s objection
to the amendment is determinative of the rejection of claim 8, we address
Appellant’s arguments regarding the objection on the merits. MPEP §
2163.06(II).
Appellant argues that the proposed amendment is a correction rather
than constituting new matter. Appeal Br. 5–14. An amendment may cure an
obvious error where a person skilled in the art would not only recognize the
existence of error but also the appropriate correction. MPEP § 2163.07; In re
Oda, 443 F.2d 1200 (CCPA 1971) (“when the nature of this error is known
it is also known how to correct it”); see also Koito Mfg. Co., Ltd. v. Turn-
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Key-Tech, LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004) (“A change to correct
an error is not considered new matter if ‘one skilled in the art would
appreciate not only the existence of an error in the specification but what the
error is’” (quoting In re Oda, 443 F.2d at 1206)).
Here, the preponderance of the evidence indicates that a person of
skill in the art would recognize that the original Specification’s statement
that “M is an electric moment of transmitter coil 220” is an error. The
preponderance of the evidence does not, however, support that a person of
skill in the art would appreciate the appropriate correction. We agree with
the findings and determinations made by the Examiner in this regard
(Ans. 2–7), and we provide further discussion below for emphasis.
As Appellant explains, the units of the Specification’s equation (Spec.
¶ 23) making use of M as a variable will not balance (i.e., have the same
units on both the left and right side of the equation) if M were, as the
original Specification states, an electric moment. See Appeal Br. 7–8
(explaining equation and electric dipole moment); see also Ans. 4 (agreeing
that a person of skill in the art would recognize an error “insofar as the right
hand side of the disclosed equation does not yield units of voltage”). The
preponderance of the evidence also supports that a person of skill in the art
would recognize that M often represents a magnetic dipole moment. Appeal
Br. 8–9; see also Oct. 3, 2014, Declaration of Dr. Sheng Fang, 2 (“Fang
Decl.”). Appellant, however, is not trying to merely correct M to be defined
as a magnetic moment rather than, as the Specification states, an electric
moment. Instead, Appellant seeks to change “electric moment” into “the
product between the magnetic moment of transmitter coil 210 and the area
of the receiver coil 220 times the number of turns of the receiver coil 220.”
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The preponderance of the evidence does not support that a person of skill in
the art would recognize that this is how the Specification must be corrected.
The Examiner finds that the Specification’s equation at paragraph 23
is an equation for Appellant’s inventive model and finds that a person of
skill in the art would not know that M must necessarily be “a product
between a magnetic moment of the transmitter and an area of the receiver
times the number of turns of the receiver.” We agree. As the Examiner
explains, even if a person of skill in the art recognized that M is magnetic
moment (because, as Dr. Fang testifies, “the variable for a magnetic moment
is commonly referred to as M” (Fang. Decl. ¶ IV)), the units on the left and
right hand sides of the equation still would not balance. There is no reason to
assume that additional corrections to reach a balanced equation must
necessarily come from M being not just a magnetic moment (as would be
typical according to Dr. Fang) but instead must be, as Appellant now urges,
the product of magnetic moment, area of the receiver and turns of the
receiver. Ans. 4–5; Appeal Br. 6–8. We agree with the Examiner that the
Appellant’s argument in untenable because, on the one hand, Appellant
argues that a person of skill in the art would recognize M to be a magnetic
moment and, on the other hand, Appellant argues that M is something
different—i.e., magnetic moment times area times turns. Ans. 5. We further
agree with the Examiner that the Grimm reference3 referring to MT*MR in
another context is insufficient for a person of skill in the art to know that M,
in the context of Specification paragraph 23, must also be MT*MR. Ans. 7.

3 The Grimm reference is R.E. Grimm, A comparison of time domain
electromagnetic and surface nuclear magnetic resonance sounding for
subsurface water on Mars, J. of Geophys. Res., 108, E4, 8037 (2003).
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The Examiner also explains that recognition of an error in the
paragraph 23 equation does not necessarily lead to the conclusion that it was
the definition of M that was in error—rather, the “units could be incorrect
due to other parts of the equation.” Ans. 4. For example, one of the
exponents in the equation could be incorrect, or another variable in the
equation could be incorrectly defined by the text. Id. at 6. The Examiner’s
analysis in this regard is sound and is not persuasively rebutted by
Appellant.
In the Reply Brief, Appellant argues that Dr. Fang made a “plain
assertion” contrary to the Examiner’s findings. We disagree. Dr. Fang
testifies that “the variable for a magnetic moment is commonly referred to as
M.” Fang. Decl. ¶ IV. He then states that the M of the equation represents
MT times MR (id. ¶ 5), but he does not testify that a person of skill in the art
would have recognized that M in the equation should be corrected to MT
times MR. Thus, even based on Dr. Fang’s testimony, a person of skill in the
art—without being told otherwise—would have thought (at best for
Appellant) that M should refer to magnetic moment.
Because Appellant’s arguments do not establish error, we sustain the
Examiner’s objection.
Rejection A, written description, claim 1. Claim 1 recites a method
which, among other things, requires estimation of a parameter and
“controlling operations in the earth formation using the at least one
parameter.” Appeal Br. 23 (Claims App.). The Examiner rejects claim 1 as
lacking written description support for this recitation. Final Act. 11.
To determine whether the written description requirement is met, we
consider “whether the disclosure of the [earlier] application relied upon
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reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Hologic, Inc.
v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018) (alteration in
original). While no particular form of disclosure is required, “a description
that merely renders the invention obvious does not satisfy the [written
description] requirement.” Ariad Pharm. v. Eli Lilly and Co., 598 F.3d 1336,
1352 (Fed. Cir. 2010) (en banc).
Here, Appellant argues that claim 1’s “controlling operations in the
earth formation using the at least one parameter” recitation is supported by
paragraphs 16–19 of the Specification. We agree. Paragraph 16 states that
“The surface control unit 140 displays desired drilling parameters and other
information on a display/monitor 143 that is utilized by an operator to
control the drilling operations.” Spec. ¶ 16. Elsewhere, the Specification
indicates that a parameter may be estimated based on electromagnetic
transient responses (as claim 1 recites). See, e.g., Id. ¶ 10. These passages, in
combination, would reasonably convey to a person of skill in the art that
Appellant possessed the “controlling operations . . . parameter” recitation.
We, therefore, do not sustain the Examiner’s related Section 112 written
description rejection of claim 1 and of the claims that depend from claim 1
(claims 3–5, 7, 8, 16–18, and 21).
Rejection A, written description, claims 5, 12, and 21. Claim 5
depends from claim 1 and recites estimating a boundary distance and
“controlling operations in the earth formation using the at least one boundary
distance.” Appeal Br. 24 (Claims App.). Claim 21 also depends from claim 1
and recites estimating a boundary distance and “using the boundary distance
to steer the BHA [bottom hole assembly] during drilling operations.” Id. at
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26. Claim 12 depends from claim 9, an apparatus claim, and requires that the
processor of claim 9 be configured to “control operations in the earth
formation using the at least one boundary distance.” Id. at 25–26. In a
manner similar to the rejection of claim 1, the Examiner objects to these
claims as lacking written description support because, according to the
Examiner, the original Specification does not indicate control of operations
based on a parameter including boundary distance. Final Act. 11.
Appellant’s argument is the same as for claim 1. Appeal Br. 15.
We again determine that Appellant’s argument identifies error. The
Specification states that “[t]he surface control unit 140 displays desired
drilling parameters and other information on a display/monitor 143 that is
utilized by an operator to control the drilling operations.” Spec. ¶ 16. The
Specification also explains, “In step 450, a boundary distance may be
estimated using the at least one parameter of interest.” Id. at 25. Thus, a
person of skill in the art would recognize that Appellant’s method produces
information, and would understand that this “other information” (Id. ¶ 16)
could be used to control drilling operations. Control of the drilling
operations could include steering a BHA. Id. ¶ 12. We, therefore, do not
sustain the Examiner’s related Section 112 written description rejection of
claims 5, 12, and 21.
Rejection A, written description, claim 8. Claim 8 recites an equation
from paragraph 23 (addressed above) and defines M as “a product between a
magnetic moment of the transmitter and an area of the receiver times the
number of turns of the receiver.” Appeal Br. 24 (Claims App.). The
Examiner rejects claim 8 for lacking written description support for the
substantially the same reason the Examiner objected to amendment of the
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Specification. Final Act. 11–12. Above, we sustained the Examiner’s
objection to Appellant’s proposed amendment of the Specification that
would include this language. Appellant does not argue that this language has
written description support absent the proposed amendment. We, therefore,
sustain this rejection.
Rejection A, written description, claim 9. Claim 9 recites, among
other things, “wherein the model approximates the earth formation as two
thin conductive sheets below the earth surface comprising an upper sheet
representing an upper portion of the earth formation including a host rock
above the tool and a lower sheet representing a lower portion of the earth
formation including a host rock below the tool.” Appeal Br. 24–25 (Claims
App.) (emphasis added). The Examiner rejects claim 9 as lacking support for
a host rock represented in the sheets. Final Act. 12.
The Specification does not use the term “host rock” at all. Appellant
nonetheless argues that the Specification supports the host rock recitations of
claim 9 at Figure 3 and paragraph 23 of the Specification. Appeal
Br. 14–15.4 We do not agree. Figure 3, at most, indicates earth above and
below the height of thin sheet conductors. It does not indicate that the model
representation of the earth formation includes host rock. Paragraph 23
likewise only indicates earth formation is above and below the tool. It also
does not indicate that the model representation includes host rock. Ans. 8.
Because Appellant’s arguments do not identify error, we sustain the
Examiner’s rejection of claim 9 and claims 10–12 (which depend from claim

4 At page 4 of the Reply Brief, Appellant states that the Examiner’s position
is “laughable.” Reply Br. 4. This rhetoric is unhelpful to our
decision-making process.
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9) based on lack of written description support for the “host rock”
recitations.
Rejection B, indefiniteness, claims 9–12. The Examiner rejects claims
9–12 as indefinite. Final Act. 13. Appellant does not dispute the rejection.
We, therefore, summarily affirm the rejection. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”)).
Rejection C, statutory subject matter, claims 1, 3–5, 7–12, and 16–18.
A. The Examiner’s Rejection
The Examiner rejects claims 1, 3–5, 7–12, and 16–18 under 35 U.S.C.
§ 101 as being directed to a judicial exception. Final Act. 14. In particular,
the Examiner explains the abstract idea of independent claim 1 as follows:
[T]he abstract idea is covered in the step of estimating the at
least one parameter of interest using the electromagnetic
transient information obtained using the receiver and a model of
transient electromagnetic responses in the earth formation
dependent on a depth of the receiver when the electromagnetic
transient information was obtained, wherein the model
approximates the earth formation as two thin conductive sheets
below the earth surface comprising an upper sheet representing
an upper portion of the earth formation above the tool and a
lower sheet representing a lower portion of the earth formation
below the tool; and controlling operations in the earth formation
using the at least one parameter. The estimating step involves
estimating a value using a necessarily mathematical model of
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physical laws governing transient electromagnetic responses in
an earth formation.
Id. at 14–15 (emphasis omitted). Similarly, the Examiner explains the
abstract idea of independent claim 9 as follows:
the abstract idea is the step [of estimating] at least one
parameter of interest of the earth formation using the
electromagnetic transient information and a model of transient
electromagnetic responses in the earth formation dependent on
a depth of the at least one antenna when the electromagnetic
transient information was obtained, wherein the model
approximates the earth formation as two thin conductive sheets
below the earth surface comprising an upper sheet representing
an upper portion of the earth formation including a host rock
above the tool and a lower sheet representing a lower portion of
the earth formation including a host rock below the tool.
Id. at 15.
B. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The U.S.
Supreme Court, however, 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 Court’s two-part 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, 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
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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 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, 67 (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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 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
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 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 environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
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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 turn to the second part
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.
(alterations in original) (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 U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).5 Consistent with the 2019 Revised Guidance
and the October 2019 Update, 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) (“Step 2A, Prong One”); and

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Consistent with the guidance, only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

C. Guidance Step 1: Do independent claims 1 and 9 fall within a
statutory category?
Pursuant to 35 U.S.C. § 101 and consistent with Step 1 of the
Guidance, we first consider whether the claimed subject matter falls within
the four statutory categories explicitly set forth in § 101: “[p]rocess,
machine, manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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53–54; see also 35 U.S.C. § 101. Here, claim 1 recites “a method of
estimating at least one parameter of interest” and, thus, falls within the
“method” category. Claim 9 recites “[a]n apparatus” that comprises, for
example, “a drill string” and “at least one antenna” and therefore falls within
the “machine” category. Thus, each claim on appeal falls within a statutory
category.
D. Guidance Step 2A Prong 1: Do independent claims 1 and 9
recite a judicial exception?
Pursuant to the U.S. Supreme Court’s Mayo and Alice framework and
consistent with the next step of the Guidance, we consider whether the claim
recites a judicial exception. Guidance, 84 Fed. Reg. at 51. The Guidance
synthesizes the key concepts identified by the courts as abstract ideas into
three primary subject-matter groupings: mathematical concepts, certain
methods of organizing human activity (e.g., a fundamental economic
practice), and mental processes. Id. at 52. For the reasons discussed below,
independent claims 1 and 9 (and, thus, all claims on appeal) each recite a
mathematical concept.
Claim 1 recites, among other things, the following estimating step:
estimating the at least one parameter of interest using the
electromagnetic transient information obtained using the receiver and
a model of transient electromagnetic responses in the earth formation
dependent on a depth of the receiver when the electromagnetic
transient information was obtained, wherein the model approximates
the earth formation as two thin conductive sheets below the earth
surface comprising an upper sheet representing an upper portion of the
earth formation above the tool and a lower sheet representing a lower
portion of the earth formation below the tool
Appeal Br. 23 (Claims App.). The Specification explains that the recited
estimation may be performed, for example, by applying the equation of
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paragraph 23. Spec. ¶ 23. Figure 4 further indicates that the estimation is
performed with a mathematical model. Spec. ¶ 25, Fig. 4. The recited
estimation is thus a mathematical calculation which is one of the
mathematical concepts identified in the revised guidance. 2019 Revised
Guidance, 84 Fed. Reg. at 52; see also, e.g., Diamond, 450 U.S. 175 at 191
(“A mathematical formula as such is not accorded the protection of our
patent laws.”). The recitation, therefore, is an abstract idea.
Our analysis of claim 9 is similar. Claim 9 recites, among other
things, a processor configured to estimate a parameter:
at least one processor configured to estimate at least one parameter of
interest of the earth formation using the electromagnetic transient
information and a model of transient electromagnetic responses in the
earth formation dependent on a depth of the at least one antenna when
the electromagnetic transient information was obtained, wherein the
model approximates the earth formation as two thin conductive sheets
below the earth surface comprising an upper sheet representing an
upper portion of the earth formation including a host rock above the
tool and a lower sheet representing a lower portion of the earth
formation including a host rock below the tool.
Appeal Br. 25 (Claims App.). The recited estimation that the processor must
be configured to perform is, for the reasons we provide with regard to claim
1, a mathematical calculation which is one of the mathematical concepts
identified in the revised guidance. The recitation, therefore, is an abstract
idea.
E. Guidance Step 2A Prong 2: Is the claim “directed to” the
recited judicial exception?
Because each independent claim (and thus all claims on appeal)
recites an abstract idea, we now determine, pursuant to the precedent of the
U.S. Supreme Court and our reviewing court and consistent with the
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Guidance, whether the recited judicial exception is integrated into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 51. According to the
Guidance, when a claim recites a judicial exception and fails to integrate the
exception into a practical application, the claim is “directed to” the judicial
exception. Id. The claim may integrate the judicial exception when, for
example, it reflects an improvement to technology or a technical field. Id.
at 55.
Here, Appellant argues, for example, that the claims require
“components [to] operate in an unconventional manner to achieve an
improvement in tool functionality.” Appeal Br. 16; see also Reply Br. 7–8
(arguing improvement in tool functionality). We agree with Appellant that
claims 1 and 9 are not “directed to” a judicial exception because the claims
integrate the recited mathematical calculation into an improvement to claim
1’s recited method and claim 9’s recited apparatus. In particular, at least
according to Appellant, the estimation using an approximation as two thin
conductive sheets improves upon existing technology. Reply Br. 6–9.
The Examiner maintains that the only improvement is to an abstract
idea such that the claim is still abstract. Ans. 9. The Examiner is correct that
our reviewing court has stated that “a claim for a new abstract idea is still an
abstract idea.” Id. (quoting Synopsys v. Mentor Graphics Corp., 839 F.3d
1138 (Fed. Cir. 2016)). Claims 1 and 9, however, each improve upon a
downhole measuring device rather than only improving upon an abstract
idea. We emphasize that we do not assess novelty of the recited claims
(whether as a whole or with respect to individual elements) when evaluating,
under step one of Alice, whether the claim is directed to an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 55 (“[r]evised Step 2A specifically
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excludes consideration of whether the additional elements represent
well-understood, routine, conventional activity”); see also, e.g., Diehr, 450
U.S. at 184–185 (determining that process for transforming raw rubber into
cured rubber that makes use of a mathematical equation is patentable subject
matter without assessing whether rubber presses were previously known).
The claims before us are similar to, for example, those of SiRF Tech.,
Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010). In
SiRF Tech., the claims at issue recited a method for calculating the position
of a GPS receiver by providing pseudoranges and making various estimates.
Id. at 1332. Our reviewing court determined that a GPS receiver is a
machine and is integral to each claim at issue. Id. The court further
determined that the GPS receiver in the claims “places a meaningful limit on
the scope of the claims.” Id. at 1332–1333.
Although SiRF Tech. predates, for example, the Supreme Court’s
Alice precedent, the decision is nonetheless instructive to the present claims.
Claim 1 requires an “electromagnetic (EM) tool” akin to the GPS receiver of
Sirf Tech. Claim 1 also requires drilling to move the tool into a borehole,
producing current through the tool, and, ultimately, controlling operations in
the earth formation7 using the estimated parameter. Claim 9 requires an
apparatus that comprises a drill string, an electromagnetic (EM) tool with an
antennae, and a processor configured as claim 9 recites. Thus, claims 1 and 9

7 The Examiner states that the controlling operations recitation could merely
be “performing further abstract calculations.” Final Act. 14. We disagree.
The operations must be “in the earth formation” according to claim 1. Given
this wording and the Specification’s context (see, e.g., Spec. ¶ 16), we
construe claim 1’s “operations” as requiring physical operations within the
earth.
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as a whole each require a downhole electromagnetic tool for evaluating earth
formations. The claims cannot be performed without this particular machine.
These recitations, like the GPS receiver in SiRF Tech., place a meaningful
limit on the scope of the claims. SiRF Tech. at 1332–1333; see also Thales
Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017) (holding that claims
directed to system for tracking object’s motion with two inertial sensors
were patent eligible); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016) (holding that claim directed to self-referential table to
improve computer databases was patent eligible); McRO, Inc. v. Bandai
Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016) (holding that claim
focused on specific asserted improvement in computer animation was patent
eligible).
The Examiner attempts to distinguish SiRF Tech. by stating that SiRF
is directed to GPS devices whereas “the instant application is directed to
modeling an earth formation using conventional downhole equipment to
gather data.” Ans. 13. Conventionality, or lack thereof, is not relevant to this
step of the analysis, however. See 2019 Revised Guidance, 84 Fed. Reg. at
55. We also note that prior GPS devices existed at the time of SiRF Tech.
SiRF Tech., Inc., F.3d at 1323 (“The patents-in-suit . . . are directed to
various improvements over conventional A-GPS technology.”).
Because independent claims 1 and 9 integrate the recited abstract idea
into a practical application, we determine that claims 1 and 9 are not
“directed to” an abstract idea. We, therefore, do not sustain the Examiner’s
rejections under 35 U.S.C. § 101.

CONCLUSION
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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5,
7–12,
16–18, 21
112 written description 8–12 1, 3–5, 7,
16–18, 21
9–12 112 indefiniteness 9–12
1, 3–5,
7–12, 16–18
101 subject matter
eligibility
1, 3–5,
7–12,
16–18
Overall
Outcome
8–12 1, 3–5, 7,
16–18, 21

We also sustain the Examiner’s objection under 35 U.S.C. § 132(a)
(as stated in the Final Office Action at pages 9–10) to Appellant’s July 17,
2015, amendment as explained above.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART