Ashok Belani et al.

Patent Trials and Appeals Board

Aug 7, 2019

11766534 - (D) (P.T.A.B. Aug. 7, 2019)

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.
11/766,534 06/21/2007 Ashok Belani 60.1743-US-NP 9553
37003 7590 08/07/2019
SCHLUMBERGER-DOLL RESEARCH
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
EXAMINER
HAGOS, EYOB
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
08/07/2019 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):
JScott19@slb.com
USDocketing@slb.com
jalverson@slb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ASHOK BELANI, TAREK M. HABASHY, TERIZHANDUR S.
RAMAKRISHNAN, FIKRI J. KUCHUK, and
RAMACHANDRA G. SHENOY
____________________

Appeal 2018-000251
Application 11/766,534
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA, II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 21–40. Appellants have cancelled claims 1–20. App. Br. 15. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the rejections under

1 Appellants indicate the real party in interest is Schlumberger Technology
Corporation, which is a wholly-owned subsidiary of Schlumberger Limited.
App. Br. 2.
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35 U.S.C. § 102(b) and 35 U.S.C. § 103.2 We REVERSE the rejection
under 35 U.S.C. § 101.
Illustrative Claim
Illustrative claim 21 under appeal reads as follows (emphasis,
formatting, and bracketed material added):
21. A method of obtaining targeted measurements from a
logging tool in a borehole comprising the steps of:
[A.] gathering with the logging tool a first set of data from a
formation environment surrounding the borehole;
[B.] analyzing the first set of data to obtain first order
features associated with the formation environment, wherein
the first order features comprise at least one of [:]
(i) layers within the formation environment adjacent to
the borehole,
(ii) a change in lithology in the formation environment,
and
(iii) a change in facies in the formation environment;
[C.] processing the first order features to identify at least one
targeted zone within the formation environment;
[D.] calculating a sensor configuration for the logging tool
which will enhance logging in the identified at least one
targeted zone;
[E.] adjusting the logging tool to achieve the calculated
sensor configuration, while the logging tool is in the
borehole;
[F.] logging the at least one targeted zone with the adjusted
logging tool to gather a second set of data; and
[G.] analyzing the second set of data to obtain second order
features associated with the at least one targeted zone.

2 We label any rejections under 35 U.S.C. § 103(a), as being under § 103.
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References3
Strack et al. US 2006/0028208 A1 Feb. 9, 2006
Sinha US 7,042,802 B2 May 9, 2006
Engels et al. US 2005/0223790 A1 Oct. 13, 2005
Rejections4
A.
The Examiner rejected claims 21–40 under 35 U.S.C. § 101 “because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more,” i.e.,
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2–3.
We select claim 21 as representative. Appellants do not separately
argue claims 22–40. Except for our ultimate decision, we do not discuss the
§ 101 rejection of claims 22–40 further herein.
B.
The Examiner rejected claims 21, 23–27, 29, 30, 32–36, and 38–40
under 35 U.S.C. § 102(b) as being anticipated by Strack. Final Act. 4–9.
We select claim 21 as representative. Appellants do not separately
argue claims 23–27, 29, 30, 32–36, and 38–40. Except for our ultimate
decision, we do not discuss the § 102(b) rejection of claims 23–27, 29, 30,
32–36, and 38–40 further herein.

3 All citations herein to these references are by reference to the first named
inventor only.
4 All citations to the “Final Action” are to the Final Action mailed on July
15, 2016.
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C.
The Examiner rejected claims 22 and 31 under 35 U.S.C. § 103
as being unpatentable over the combination of Strack and Sinha. Final
Act. 9–10.
Appellants do not present separate arguments for claims 22 and 31.
Thus, the rejections of these claims turn on our decision as to claim 21.
Except for our ultimate decision, we do not discuss the § 103 rejections of
claims 22 and 31 further herein.
D.
The Examiner rejected claims 28 and 37 under 35 U.S.C. § 103 as
being unpatentable over Strack and Engels in numerous combinations with
other references. Final Act. 10–11.
Appellants do not present separate arguments for claims 28 and 37.
Thus, the rejections of these claims turn on our decision as to claim 21.
Except for our ultimate decision, we do not discuss the § 103 rejections of
claims 28 and 37 further herein.

Issues on Appeal
Did the Examiner err in rejecting claim 21 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claim 21 as being anticipated by
Strack?

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CLAIM CONSTRUCTION
“at least one of”
Although not at issue in this Appeal, our understanding of the proper
interpretation of Appellants’ claim 21, at step B, is as follows (recited
in-part, emphasis added):
wherein the first order features comprise at least one of
(i) layers within the formation environment adjacent to
the borehole,
(ii) a change in lithology in the formation environment,
and
(iii) a change in facies in the formation environment.
In (ii), we read the “and” as an “or.” Typically, case law dictates the phrase
“at least one” preceding a series having members separated by “and” (rather
than “or”) must be construed as a conjunctive list where the phrase “at least
one” of modifies each and every member of the series. Superguide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 886 (Fed. Cir. 2004).
However, we conclude that SuperGuide is not pertinent here. Unlike
SuperGuide (read as “at least one of [category A], at least one of [category
B], and at least one of [category C]”, items (i), (ii), and (iii) here are not
categories. Applying the “at least one of” to each individual item here does
not make grammatical sense, e.g., item (i) would read “at least one of layers
within the formation environment adjacent to the borehole.”
Further, a reading of claim 21 based on categories as in SuperGuide is
not sufficiently described by the Specification. The only support we find for
items (i)–(iii) is a sole sentence lacking any indication of categories: “The
first order features are major features of the borehole, such as layering
adjacent to the borehole, changes in lithology or facies, etc.” Spec ¶ 16.
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ANALYSIS
A. Section 101
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 U.S. 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,
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. 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, 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, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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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
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
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 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
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. (alterations in original) (quoting Mayo,
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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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) (see Memorandum Step 2A – Prong One) 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) (see Memorandum Step 2A – Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).5
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 are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO’s January
7, 2019 Memorandum, “2019 Revised Patent Subject Matter Eligibility
Guidance.”
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(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 Memorandum Step 2B.
C. Examiner’s § 101 Rejection –
C.1. Alice/Mayo - Step 1
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 21 is directed to an abstract idea.
Regarding claims 21 and 30, the limitation(s) in the claim
that set(s) forth or describe(s) the abstract idea is (are): [above
steps B, C, D, and G]. The claimed invention focuses on
calculation of sensor configuration using mathematical
algorithm, operations or relationships. These steps are similar to
the concepts identified as abstract ideas by the courts (e.g.,
Benson, Diehr, Flook, SmartGene, and Grams).
Final Act. 2–3.
C.2. Alice/Mayo - Step 2
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes
claim 21 does not amount to significantly more than the judicial exception.
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional elements are
[A.] gathering with the logging tool a first set of data from
a formation environment surrounding the borehole,
[E.] adjusting the logging tool to achieve the calculated
sensor configuration while the logging tool is in the
borehole, and
[F.] logging at least one targeted zone with the adjusted
logging tool to gather a second set of data
which are mere data collection activity for gathering parameters
to be implemented in the abstract idea, which also does not
further limit the abstract idea.
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Final Act. 3 (emphasis, formatting, and bracketed material added). The
Examiner further determines:
Beyond the abstract idea, we next look at additional limitations
that can be considered to be significantly more and something
that the industry had not been able to obtain. The limitations
involving [above steps A, E, and F,] but said limitations are
directed to data collection activity for gathering parameters to be
implemented in the abstract idea, which also does not further
limit the abstract idea. Moreover, the additional elements are
recited at a high level of generality, and are generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry.
Ans. 5 (emphasis and bracketed material added).
D. Appellants’ § 101 Arguments6
Appellants contend “Claim 21 is directed to significantly more than an
abstract idea by itself. Claim 21 is directed to an improvement to a
technological process (i.e., formation logging).” App. Br. 6. Appellants
particularly contend:
[T]he logging tool can be reconfigured to optimally log different
second order features without withdrawing the logging tool to the
surface. See Present Application, paragraphs 9 and 17. This is
an improvement in oilfield technology.
App. Br. 8 (emphasis added).
E. Panel’s § 101 Analysis
We are persuaded by Appellants’ argument. First, we find conclusory
the Examiner’s determination that step E (adjusting the logging tool to
achieve . . .) is mere data collection activity (Final Act. 3, Ans. 5), i.e.,

6 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellants’ other § 101
contentions herein.
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insignificant extra-solution activity. The Memorandum references MPEP
2106.05(g) for “information concerning insignificant extra-solution
activity.” 84 Fed. Reg. 55, n.31. The Examiner’s determination as to step E
provides no analysis based on the MPEP guidance; and we are unable to
otherwise determine why the “adjusting” of step E should be determined to
be insignificant extra-solution activity.
Second, we likewise we find conclusory the Examiner’s determination
that step E is “generic computer functions that are well-understood, routine,
and conventional activities previously known to the pertinent industry.”
Ans. 5. Consistent with the USPTO Berkheimer Memorandum (April 19,
2018), the Memorandum (Jan. 7, 2019) states that such a determination
“must be supported with a factual determination” by the Examiner. 84 Fed.
Reg. 56, n.36. As we affirm infra a rejection of claims 21–40 on other
grounds, we do not reach whether such a factual determination might be
possible based on the references of record. We only determine that the
Examiner has not provided the required factual determination.
We conclude that, when evaluated under the Memorandum, the
Examiner has not demonstrated that claim 21 does not provide an inventive
concept. We do not sustain the rejection of claim 21 under 35 U.S.C. § 101.
F. Section 102(b)
We have reviewed the Examiner’s 102(b) rejections in light of
Appellants’ Appeal Brief arguments that the Examiner has erred. We
disagree with Appellants. Except as noted below, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief arguments.
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We concur with the conclusions reached by the Examiner. We highlight the
following points.
F.1. Appellants’ § 102(b) Arguments
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 102(b).
Claim 21 requires determining first order features
associated with the formation environment before the logging
tool is adjusted to log the targeted zone. The use of antecedent
basis in the claim requires that first order features are determined
before a logging tool is adjusted.
App. Br. 10.
The Strack reference fails to disclose or suggest
determining first order features associated with the formation
environment before the logging tool is adjusted to log the
targeted zone, as required by claim 21. The Strack reference is
directed to a method for determining spatial distribution of
resistivity of Earth formations surrounding a well bore having a
conductive pipe therein. The Strack reference mentions selecting
electrodes and adjusting the current supplied to the electrodes
disposed on a logging tool. Strack reference, paragraph 61.
These adjustments, however, are not performed to log a
targeted zone in the formation, as required by claim 21. These
adjustments are made merely to perform a stable measurement
of the formation. Figure 6 of the Strack reference shows how the
measurement is performed.
App. Br. 11 (emphasis added).
At steps 72 and 75 [of Strack], the voltages are analyzed to
determine whether the measurement is stable. If the
measurement is stable, then the resistivity of the formation is
derived at step 77. If the measurement is not stable, then a
compensation scheme is developed and the electrode parameters
are changed at steps 76, 78, and 79 so that a stable measurement
can be obtained. Determining whether the measurement is stable
at steps 72 and 75 does not constitute determining first order
features associated with the formation environment, as required
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by claim 21. . . . In the Strack reference, a resistivity of the
formation is determined at step 77 only after the measurement
is determined to be stable at step 75. Thus, the resistivity of the
formation is determined only after the tool is adjusted (if
adjustment is necessary).
App. Br. 12–13 (emphasis added).
F.2. Panel’s § 102(b) Analysis
We agree with Appellants that the use of antecedent basis in the claim
requires that first order features are determined before a logging tool is
adjusted. However, we are not persuaded by Appellants’ assertion that the
Strack reference fails to disclose or suggest determining first order features
associated with the formation environment before the logging tool is
adjusted to log the targeted zone.
Appellants first acknowledge that “[t]he Strack reference is directed to
a method for determining spatial distribution of resistivity of Earth
formations surrounding a well bore having a conductive pipe therein, [and]
mentions selecting electrodes and adjusting the current supplied to the
electrodes disposed on a logging tool.” App. Br. 11. Then, Appellants
assert that “[t]hese adjustments, however, are not performed to log a targeted
zone in the formation, as required by claim 21, [and] are made merely to
perform a stable measurement of the formation.” Id. First, Appellants do
not sufficiently explain why Strack’s “determining spatial distribution of
resistivity of Earth formations surrounding a well bore” is different from the
claimed “log a targeted zone in the formation.” Stated differently,
Appellants do not explain why the “area surrounding the well bore” is
precluded from being the “targeted zone.”
Second, there are two interrelated feedback paths in Strack.
Appellants discuss the steps 72-75-76 path, but Appellants do not discuss the
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steps 72-73-74-76 path. See Strack Fig. 6. Contrary to Appellants’ premise
that adjustments “are made merely to perform a stable measurement,” the
adjustment will also cause changes at steps 71-72-73 resulting in a changed
model of the resistivity distribution around the outside of the wellbore.
Third, we disagree with Appellants’ assertion that Strack does not
determine first order features associated with the formation environment as
part of the steps preceding determining the measurement is stable at step 75.
See App. Br. 12–13. Appellants do not explain why the stable (and any
preceding unstable) sets of formation resistivity calculation (at step 75) or
the model of the resistivity distribution around the outside of the wellbore (at
step 73) are precluded from being the claimed first order features.
Fourth, Appellants are mistaken in concluding that:
In the Strack reference, a resistivity of the formation is
determined at step 77 only after the measurement is determined
to be stable at step 75. Thus, the resistivity of the formation is
determined only after the tool is adjusted (if adjustment is
necessary). In cases where no adjustment is necessary (i.e., the
measurement is stable), the tool is not adjusted. Claim 21
requires an opposite approach. Claim 21 requires determining
first order features associated with the formation environment
before the logging tool is adjusted.
App. Br. 13. This conclusion relies on equating Strack’s step 77 resistivity
determination to the claimed first order feature. Strack at paragraph 61 is
explicit that step 77 is deriving a second order feature (“determining a
second derivative”).

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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 21–40 under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter.
(2) The Examiner has not erred in rejecting claims 21, 23–27, 29, 30,
32–36, and 38–40 as being unpatentable under 35 U.S.C. § 102(b).
(3) The Examiner has not erred in rejecting claims 22, 28, 31, and 37
as being unpatentable under 35 U.S.C. § 103.
(4) Claims 21–40 are not patentable.

DECISION
The Examiner’s rejection of claims 21–40 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is reversed.
The Examiner’s rejections of claims 21–40 as being unpatentable
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103 are affirmed.

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED