Ex Parte Garcia

Patent Trial and Appeal Board

Dec 19, 2018

14273964 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/273,964 05/09/2014 Gonzalo A. Garcia
44639 7590 12/21/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
PPS4-55647-US/GMI0019US2 9554
EXAMINER
DESTA, ELIAS
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GONZALO A. GARCIA
Appeal 2018-003816
Application 14/273,964
Technology Center 2800
Before DONNA M. PRAISS, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In this Decision, we refer to the Specification filed May 9, 2014 ("Spec."),
the Final Office Action dated April 24, 2017 ("Final Act."), the Appeal Brief
filed September 18, 2017 ("Appeal Br."), the Examiner's Answer dated
December 29, 2017 ("Ans."), and the Reply Brief filed February 27, 2018
("Reply Br.").
2 Appellant identifies the real party in interest as Baker Hughes
Incorporated, whose name changed as of July 3, 2017, to Baker Hughes, a
GE company, LLC. Appeal Br. 2.
Appeal 2018-003816
Application 14/273,964
The subject matter on appeal relates to a non-transitory medium that
includes computer executable instructions for presenting dumpflood data to
a user by implementing steps on a computer, and a method for presenting
dumpflood data to a user. Spec. ,r,r 3--4.
Dumpflooding is a method used in oil production for flowing a fluid
from a first subsurface reservoir (e.g., containing water) to a second
subsurface reservoir that is beneath the first reservoir (e.g., containing oil).
Id. ,r 13. The addition of water to the oil reservoir provides the reservoir
support pressure necessary for oil production. Id. ,r 2. The water is injected
either by gravity and/or pump from the upper reservoir into the lower
reservoir via a borehole connecting the two reservoirs. Id. ,r 13. There are
different types of equipment and technologies to transfer the water. Id. The
claimed method on appeal, which is implemented by a computer processing
system, allows for easily inputting and changing any of several variables that
may be used to calculate pressures that are required for flowing the
water. Id.
Claims 1 and 10, reproduced below from the Claims Appendix of the
Appeal Brief, are illustrative of the claims on appeal.
1. A non-transitory computer-readable medium comprising
computer-executable instructions for presenting dumpflood data
to a user by implementing steps on a computer, the steps
compnsmg:
receiving first data describing a first subsurface volume;
receiving second data describing a second subsurface
volume that is deeper than the first subsurface volume;
calculating pressures required for a fluid to flow in a
borehole from the first volume to the second volume as a
function of vertical height of the first volume (hl), permeability
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Application 14/273,964
of the first volume (kl), vertical height of the second
volume (h2), permeability of the second volume (k2), a first
damage factor (S 1) representing damage to the first volume,
and a second damage factor (S2) representing damage to the
second volume, wherein the calculating uses the first data and
the second data;
displaying on a computer display a graphical
representation of the calculated pressures and inputs used to
calculate the pressures; and
presenting an option comprising installing or operating a
dumpflood component in response to the calculated pressures.
10. A method for presenting dumpflood data to a user and
installing or operating a dumpflood component, the method
compnsmg:
receiving first data describing a first subsurface volume
using a computer processing system;
receiving second data describing a second subsurface
volume that is deeper than the first subsurface volume using the
computer processing system;
calculating, using the computer processing system,
pressures required for a fluid to flow in a borehole from the first
volume to the second volume as a function of vertical height of
the first volume (hl), permeability of the first volume (kl),
vertical height of the second volume (h2), permeability of the
second volume (k2), a first damage factor (S 1) representing
damage to the first volume, and a second damage factor (S2)
representing damage to the second volume, wherein the
calculating uses the first data and the second data;
displaying on a computer display a graphical
representation of the calculated pressures and inputs used to
calculate the pressures;
presenting an option comprising installing or operating a
dumpflood component using the computer processing system in
response to the calculated pressures; and
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Application 14/273,964
installing or operating the dmnpflood component in
response to the option.
Appeal Br. 12-14 (Claims App.).
DISCUSSION
The Examiner maintains the rejection of claims 1-16 under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., an abstract idea) without significantly more. Final Act. 2;
Ans. 2.
After review of the cited evidence in light of the Appellant and the
Examiner's opposing positions, we determine that Appellant has not
identified reversible error in the Examiner's rejection. Accordingly, we
affirm the rejection for the reasons set forth below, in the Final Office
Action, and in the Examiner's Answer.
Appellant argues the claims in the following groups: 1) claims 1-9,
and 2) claims 10-16. We address each group in tum below. We choose
independent claim 1 as representative of the first group of claims and
independent claim 10 as representative of the second group of claims.
37 C.F.R. § 4I.37(c)(l)(iv) (2013). Each of dependent claims 2-9 and 11-
16 will stand or fall with the independent claim from which it depends.
A two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101 is set forth
in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.
66, 78-79 (2012), and further explained in Alice Corp. Pty. Ltd. v. CLS Bank
International, 573 U.S. 208 (2014). The first step requires determining
whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. See Alice, 573 U.S. at 217 (citing Mayo, 566 U.S. at 76-
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Application 14/273,964
77). The second step requires examining "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 (quoting Mayo, 566 U.S. at 72, 79).
The Examiner finds that claim 1 is directed to an abstract idea because
"the concept of presenting data, calculating values of parameters and then
displaying a graphic representation are identified as abstract by courts, see
Alice, Bilski." Final Act. 2-3. The Examiner also finds that the additional
elements, such as implementing the computation on a "computer" and
"displaying on [a] computer display" are "well understood[,] routine, and
conventional elements that amount to no more than implementing the idea
with a computerized system." Id. at 3. According to the Examiner, "[t]he
combination of these computer elements with the abstract idea ( calculating
pressure, which is considered a human thought process) add nothing more
than what is present when the elements are considered individually." Id.
And, there is no indication that the combination provides any effect
regarding the functioning of the computer or any improvement to another
technology. Id. As for the last step of claim !-"presenting an option
comprising installing or operating a [ dumpflood] component in response to
the calculated pressures," the Examiner finds that this step does not add or
change the abstractness of the idea because "it is simply providing
information to the end user[, which is] synonymous to the 'displaying on a
computer display."' Id.
The Examiner relies on the same rational discussed above for claim 1
for rejecting claim 1 0. Id.
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Application 14/273,964
Claims 1-9
Appellant argues that claim 1 includes steps that "improve the
functionality of hydrocarbon production technology by presenting options
for installing or operating specific dumpflood components in order to
efficiently extract hydrocarbons using a dumpflooding process." Appeal
Br. 5. In addition, Appellant argues that "claim 1 according to the 2014
Interim Guidance includes subject matter that qualifies as 'significantly
more' than the judicial exception itself." Id.
These arguments are not persuasive because Appellant is arguing
limitations that do not appear in the claim. Claim 1 neither recites an
improvement to the functionality of hydrocarbon production nor does
Appellant explain how claim 1 's recited steps improve the functionality of
hydrocarbon production. Rather, claim 1 merely recites steps that amount to
the collection and analysis of data, followed by the presentation of the
results to the user, with the results including an option that may or may not
be selected and implemented and thus are directed to an abstract idea similar
to the claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353-54 (Fed. Cir. 2016). Ans. 10.
We are also not persuaded that claim 1 's steps are not conventional in
the art as evidenced by the lack of prior art rejections. Reply Br. 3. "[T]he
concept of inventiveness [ under § 101] is distinct from that of novelty" and
"[t]he inventiveness inquiry of§ 101 should therefore not be confused with
the separate novelty inquiry of§ 102 or the obviousness inquiry of§ 103."
See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed.
Cir. 2016). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
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Appellant argues that claim 1 is similar to the claims in Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) andMcRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1314 (2016), and does
not claim an abstract idea. Appeal Br. 5-8.
Appellant's arguments are not persuasive of reversible error. Unlike
Enfzsh where the claims were deemed to be an improvement in computer
technology, claim 1 recites steps in which a computer is used as a tool for
performing calculations. Moreover, as the Examiner points out, the
computer recited in claim 1 is a general purpose computer. Ans. 1 O;
Spec. ,r 22. Likewise, claim 1 is not similar to the claims in McRO, which
allowed a computer to automatically perform a task which was previously
performed in a different manner by humans. Rather, claim 1 receives data,
performs a calculation, and displays the results like the claims found to be
patent ineligible in Electric Power. Ans. 10. Nor is it evident from
Appellant's Specification that claim 1 's method recites a qualitatively
different method for presenting dumpflood data to a user than had previously
been available. As the Examiner explains, "[p ]resumably[] a human
previously trying to carry out the same task would or could have done so in
the same manner, performing the same calculation 'by hand' and getting the
same results, which would then provide the same information to determine
which of various options would be most appropriate." Ans. 11.
Appellant argues that the Examiner fails to present evidence or an
explanation why "displaying on a computer display a graphical
representation of the calculated pressures and inputs used to calculate the
pressures" and "presenting an option comprising installing or operating a
dumpflood component in response to the calculated pressures" are routine
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and well understood in the art of hydrocarbon production technology.
Appeal Br. 9.
This argument is not persuasive because it is well established that
generic computer displays are well-understood, routine, and conventional in
the art. Alice, 134 S. Ct. at 2358 ("the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention"); id. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.").
Because Appellant's arguments do not identify reversible error in the
Examiner's 35 U.S.C. § 101 analysis, we sustain the rejection of claims 1-9.
Claims 10-16
Appellant argues that claim 10' s recitation of "installing or operating
the dumpflood component in response to the option," is a physical action
using physical equipment (i.e., the dumpflood component). Appeal Br. 9.
Appellant argues that the physical action using physical equipment is clearly
not an abstract idea. Id. at 9-10. Consequently, claim 10 includes subject
matter that is "significantly more" than the abstract idea itself alleged by the
Examiner and is thus patent eligible under 35 U.S.C. 101. Id. at 10.
Appellant's arguments are not persuasive of reversible error because,
as the Examiner explains, the limitation "installing or operating the
dumpflood component in response to the option" is recited at a very high
level of generality, including essentially all possible actions that could be
taken as a result of presenting the option to the user. Moreover, "installing
or operating the dumpflood component in response to the option" includes
choosing not to operate the dumpflood component, i.e., leaving the
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Application 14/273,964
dmnpflood component idle. Spec. ,r 13 ("the user may observe from the
graph that the pressure from gravity is sufficient to flow the water and no
further intervention may be required"). Thus, the additional limitation of
claim 10 does not distinguish the claim in terms of patent eligibility over the
limitations of claim 1.
Because Appellant's arguments do not identify reversible error in the
Examiner's 35 U.S.C. § 101 analysis, we sustain the rejection of claims 10-
16.3
DECISION
The rejection of claims 1-16 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
3 For the first time in the Reply Brief, Appellant raises arguments concerning
claim 14. Reply Br. 7. This argument is untimely because it was not
presented in the Appeal Brief, and the Appellant has not attempted to show
good cause for presenting it for the first time in the Reply Brief. See
37 C.F.R. § 41.41(b)(2).
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