Ex Parte Chen et al

Patent Trial and Appeal Board

Jul 31, 2018

14417439 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/417,439 01/26/2015
142050 7590 08/02/2018
HALLIBURTON ENERGY SERVICES, INC.
C/0 PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
FIRST NAMED INVENTOR
Tianrun Chen
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.
2013-077559 Ul US 2416
EXAMINER
AIELLO, JEFFREY P
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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
Exparte TIANRUN CHEN, YIBING ZHENG, TATIANA GILSTRAP,
ARTHUR CHEN HON CHENG, ROBERT ERIC EPSTEIN,
and ZHIJUAN ZHANG
Appeal2018-001944
Application 14/417,439
Technology Center 2800
Before JEFFREY T. SMITH, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20, which constitute all the claims pending in this
application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 In our Decision, we refer to the Specification filed January 26, 2015
("Spec."); Final Office Action dated September 16, 2016 ("Final Act.");
Advisory Action dated January 26, 2017 ("Adv. Act."); Appeal Brief filed
April 17, 2017 ("Appeal Br."); and Examiner's Answer dated August 28,
2017 ("Ans.").
2 Appellant is the Applicant, Halliburton Energy Services, Inc., which is
also identified as the real party in interest. Appeal Br. 3.
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Application 14/417,439
We AFFIRM.
The Claimed Invention
The claimed subject matter relates to a method for determining
impedance of a casing-cement bond of a well structure based on results of
comparing a measured waveform and a model waveform. Abstract;
Spec. ,r 1. According to the Specification, analysis of ultrasonic waves
reverberating within the casing can provide an estimation of the impedance
of cement-casing bonding, and therefore can be used to determine whether
the material behind the casing is solid or liquid. Spec. ,r 2.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method comprising:
emitting, by an acoustic transmitter of a logging tool
disposed within a well bore, acoustic energy towards a well
casing of the wellbore;
detecting, by an acoustic receiver of the logging tool, an
acoustic signal returning via the well casing;
determining, based on the acoustic signal, a measured
wave/ orm associated with the acoustic signal;
comparing the measured wave/ orm to a model
wave/ orm, wherein the model waveform corresponds to an
estimated impedance of a medium surrounding an exterior
portion of the well casing, and the model waveform
corresponds to a ray tracing of the acoustic signal that accounts
for a radiation pattern of the acoustic transmitter and a
curvature of the well casing;
determining, by operation of data processing apparatus,
an impedance of the medium surrounding the exterior portion
of the well casing based on results of comparing the measured
waveform to the model waveform; and
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determining, by operation of the data processing
apparatus, a thickness of the well casing based on a
correlation between the measured wave/ orm and the model
waveform.
Appeal Br. 14 (Claims App'x) (key disputed claim language italicized and
bolded).
The Rejection
On appeal, the Examiner maintains (Ans. 2) the following rejection:
claims 1-20 rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. Final Act. 2.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejection based on the fact finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Appellant argues independent claims 1, 9, and 1 7 as a group and does
not present separate argument for the patentability of claims 2-8, 10-16, and
18-20. Appeal Br. 6, 12. We select claim 1 as representative and the
remaining claims subject to the Examiner's rejection stand or fall with claim
1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that Appellant's claimed invention is
unpatentable under 35 U.S.C. § 101 because it is directed to non-statutory
subject matter. Final Act. 2--4; see also Ans. 3-7. In particular, the
Examiner determines that the claims are drawn to the abstract idea of
evaluating a casing and cement of a well structure by comparing a measured
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waveform and a model waveform, calculating the results, and using the
calculated results (i.e., a mathematical correlation) to determine the
impedance and thickness of a well casing, and further determines that the
recited claim steps "do not amount to significantly more than the abstract
idea judicial exception because they solely use generic/conventional
hardware and data gathering techniques." Ans. 2-3 ( citing Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014)).
The Examiner also determines that
the recited method steps comprise a series [ ofJ
mathematical/ algorithmic and/ or mathematical formula and/ or
data processing/analysis steps which correspond to concepts
identified as an abstract idea, or ideas, in the form of a
mathematical formula similar to those found to be non-patent
eligible in, e.g., Alice, Benson, Electric Power Group,
Fair Warning, and Parker v Flook.
Id. at 4.
The Examiner concludes that the additional elements recited in the
claims, for example, a "data processing apparatus," when considered both
individually and as an ordered combination do not amount to significantly
more than the abstract idea because the elements comprise
generic/conventional data gathering and data processing and
computer/computing components. Id. at 5 (citing Spec. ,r,r 16-17, 25, 33,
39--40, 43, 47); see also Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)).
Appellant argues that the Examiner's rejection should be reversed
because the claims closely align with certain of the examples provided in the
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2014 Interim Guidance on Patent Subject Matter Eligibility3; (b) July 2015
Update on Subject Matter Eligibility4; and ( c) Abstract Ideas Examples of
the 2014 IEG5. Appeal Br. 7-10.
In particular, citing Example 3 of the 2014 IEG, Example 25 of the
July 2015 Update, and Example 3 of the Abstract Ideas, Appellant argues
that the combination of steps recited in the claims "taken together ( viewed as
a whole) amount to significantly more because the steps act 'in concert' to
improve another technical field (other than the computer itself)." Id. at 8.
Appellant further argues that the recitation "comparing a measured
waveform to a model waveform" of the claims "adds meaningful limitations
to [the] 'generic/ conventional hardware' and 'conventional/ generic data
gathering' that amount to significantly more than the (abstract idea) judicial
exception." Id. at 9-10 (citing Research Corporation Technologies Inc. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)).
Appellant also argues that the claims do not only contain
"generic/conventional hardware" and "conventional/generic data gathering"
but that they also "recite an inventive concept tied to a specific machine."
Id. at 10-11. In particular, Appellant contends that the claims amount to
significantly more than the abstract idea because the recited "steps are
3 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74618 (published on Dec. 16, 2014) ("2014 IEG").
4 July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429
(published July 30, 2015) ("July 2015 Update")
5 Abstract Ideas Examples of the 2014 IEG (issued January 27, 2015)
("Abstract Ideas").
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performed by an acoustic transmitter/receiver and data processing
apparatus." Id. at 11.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection.
The Supreme Court's decision in Alice identifies a two-step
framework for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101. According to Alice step one,
" [ w] e must first determine whether the claims at issue are directed to a
patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at
2355.
Step two of the Alice framework is "a search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. at 2355 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72 (2012)).
In applying step two, we must determine whether there are any
"additional features" in the claims that constitute an "inventive concept,"
Alice, 134 S. Ct. at 2357, and whether those "additional features" amount to
more than merely "well-understood, routine, conventional activity." Mayo,
566 U.S at 79.
Beginning with the first step of the Alice framework, we look at
claim 1 to determine whether it is directed to an abstract idea. Claim 1
recites a method comprising the following steps: (1) "emitting, by an
acoustic transmitter of a logging tool disposed within a well bore";
(2) "detecting, by an acoustic receiver of the logging tool, an acoustic
signal"; (3) "determining, based on the acoustic signal, a measured
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waveform associated with the acoustic signal"; (4) "comparing the measured
waveform to a model waveform"; (5) "determining, by operation of data
processing apparatus, an impedance of the medium surrounding the exterior
portion of the well casing"; and (6) "determining, by operation of the data
processing apparatus, a thickness of the well casing based on a correlation
between the measured waveform and the model waveform." Appeal Br. 14
(Claims App'x).
Based on the language of the claim and the Specification, we concur
with the Examiner (Ans. 4) and conclude that claim 1 is, at its core, directed
to the abstract idea of evaluating a casing and cement of a well structure by
collecting, processing, and mathematically manipulating data. See
Intellectual Ventures I LLC v. Capital One Financial Corporation, 850 F .3d
1332, 1340 (Fed. Cir. 2017) (holding claims ineligible under§ 101 where
the "concept related to the collection, display, and manipulation of data");
Elec. Power Grp., 830 F.3d at 1353 (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent-ineligible concept").
The fact that the data being collected and processed relates to a
method for evaluating a casing and cement of a well structure, as opposed to
some business method, and the claimed method may be implemented using
general purpose computer equipment (i.e., "by operation of data processing
apparatus") does not render the claim patent-eligible or the underlying idea
any less abstract. See Alice, 134 S. Ct. at 2358 (holding that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention"); see also Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
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Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir.
2012) ("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.").
Moreover, the Federal Circuit has explained that, in determining
whether claims are patent-eligible under Section 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
We concur with the Examiner that Appellant's claims are similar to
those found to be patent-ineligible in prior cases, particularly because, as the
Examiner finds, "the recited method steps comprise a series of
mathematical/algorithmic ... and/or data processing/analysis steps which
correspond to concepts identified as an abstract idea." Ans. 6 ( citing "Alice
Corp., Benson, Electric Power Group, and Parker v Flook'' as exemplary
cases).
Unlike the claims found non-abstract in prior cases, Appellant's
claimed invention is directed to data collection, analysis, and manipulation
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016) (finding claims not abstract because they "focused on
a specific asserted improvement in computer animation").
For example, the steps of "determining, by operation of data
processing apparatus, an impedance" and "determining, by operation of the
data processing apparatus, a thickness of the well casing" recited in claim 1
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(steps (5) and (6) enumerated above) could each conceivably be performed
using mental steps, pen, and paper. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (claims directed to an
abstract idea, where "with the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper"); see also
Elec. Power Grp., 830 F.3d at 1354 (treating "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category").
Turning to the second step of Alice, we find claim 1 does not contain
an inventive concept sufficient to "'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355.
Based on the fact-finding and reasons provided by the Examiner at
pages 3-6, 8-10, and 12-13 of the Answer and pages 3--4 of the Final Office
Action, we concur with the Examiner's determination that each of the steps
of claim 1, considered both individually and as an ordered combination, is
conventional, and does not amount to significantly more than the
implementation of the abstract idea of collecting, analyzing, and
mathematically manipulating data. See Alice, 134 S. Ct. 2357 (finding
"conventional steps" insufficient to supply an "inventive concept").
As the Examiner finds (Ans. 5---6), claim 1 is directed to and the
Specification discloses "generic/conventional data gathering and data
processing and computer/computing components" for performing the steps
of the method. See, e.g., Spec. ,r 28 ( disclosing general purpose "computing
system 200" including a memory, processor, and input/output controller
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components), ,r 5 8 ( disclosing that a general purpose "electronic processor
may be used to control acoustic transmitters and receivers" and "used to
analyze and process data, for instance to determine an impedance of the
casing based on a comparison between the detected acoustic signal and a
modeled signal").
As the Examiner further finds (Ans. 10), the claims do not require or
recite a special/unique ordered combination of method steps for evaluating a
casing and cement of a well structure. Rather, as discussed above, we find
that the recited steps are nothing more than instructions to gather and
manipulate data implemented using conventional data processing and
computer equipment. Mayo, 566 U.S. at 82 ( explaining that pre- or post-
solution activities that are "purely 'conventional or obvious ... can[not]
transform an unpatentable principle into a patentable process'") ( quoting
Parker v. Flook, 437 U.S. 584, 589-90 (1978)).
Appellant does not adequately explain what element or combination
of elements transforms the nature of the claim into significantly more than a
patent upon the ineligible concept itself. Appellant's contention that the
claims amount to significantly more than the abstract idea because the "steps
are performed by an acoustic transmitter/receiver and data processing
apparatus" (Appeal Br. 11) is not persuasive because it is conclusory and
Appellant does not provide an adequate technical explanation to support it.
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, a patent-ineligible abstract idea is not transformed into a
patent-eligible invention merely by "limit[ing] the use of [an abstract idea]
'to a particular technological environment."' Alice, 134 S. Ct. at 2358
(quoting Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)).
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Appellant's arguments regarding the examples provided in the
guidance materials (Appeal Br. 7-10) are not persuasive of reversible error
in the Examiner's rejection because determining whether a claim is directed
to an abstract idea under § 101 is not limited to the exemplary categories of
abstract ideas and examples provided in the guidance materials. Rather, as
noted above and we apply here, it is the two-step framework from Alice that
is used for making such determination.
Appellant's argument regarding the Research Corporation
Technologies ("RCT') decision (Appeal Br. 9-10) is misplaced because, as
the Examiner finds (Ans. 12-13), the instant claims are distinguishable from
the claims at issue in that case. In Research Corporation Technologies, the
court observed that the claimed methods (i.e., claims 1 and 2 of US
5,111,310 and claim 11 of US 5,341,228) at issue incorporated algorithms
and formulas that control the masks and half-toning. Research Corporation
Technologies, 627 F.3d at 869 (finding that "[t]he invention presents
functional and palpable applications in the field of computer technology").
Here, however, the claimed subject matter is not in the field of
computer technology. Rather, it involves evaluating a casing and cement of
a well structure by collecting, processing, and mathematically manipulating
data.
We, therefore, determine that claim 1 is directed to an abstract idea
and fails to recite an inventive concept sufficient to transform the abstract
idea into patent-eligible subject matter.
Although claims 9 and 17 are directed to a "non-transitory computer-
readable medium encoded with instructions" ( claim 9) and a "system"
( claim 17), respectively, each of these claims recites limitations nearly
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identical to claim 1. Compare claim 1 (Appeal Br. 14) with claim 9 (Appeal
Br. 16) and claim 17 (Appeal Br. 18).
Thus, for principally the same reasons discussed above with respect to
claim 1, we determine that claims 9 and 1 7 are likewise directed to the
abstract idea of collecting, analyzing, and mathematically manipulating data
and do not contain an inventive concept sufficient to transform the nature of
the claim into a patent-eligible application. Alice, 134 S. Ct. at 2355; see
also Intellectual Ventures I, 838 F.3d at 1340 (holding method, systems, and
apparatus claims of a patent "ineligible under § 101 for reciting similar data
manipulation steps").
Accordingly, we affirm the Examiner's rejection of claims 1-20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
DECISION/ORDER
The Examiner's rejection of claims 1-20 is affirmed.
It is ordered that the Examiner's decision is affirmed.
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
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