Ex Parte Herwanger et al

Board of Patent Appeals and Interferences

Jul 29, 2012

11180956 (B.P.A.I. Jul. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JORG V. HERWANGER and STEPHEN ALLAN HORNE
____________

Appeal 2010-002575
Application 11/180,956
Technology Center 3600
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jorg V. Herwanger and Stephen Allan Horne (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-6, 8-
14, 16-22, 24-30, 32, 33, and 65-70. The Examiner withdrew claims 7, 15,
23, 31, and 34-64 from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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The Claimed Subject Matter
The claimed subject matter relates to “characteriz[ing] or predict[ing]
changes in the stress-field in the rock-mass inside a reservoir and the
surrounding rock mass using seismic data and coupled reservoir and
geomechanical modeling.” Spec. 2, ll. 15-17. Claims 1, 10, 18, 26, 65, and
68 are independent and claim 1, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. A method, comprising:
ascertaining a perturbation of an anisotropic
physical property in a reservoir and in
a surrounding rock mass over time;
and
determining the change in a seismic
attribute resulting from the
perturbation in the anisotropic
physical property.

The Evidence Relied Upon and The Rejection
The Examiner relies upon the following as evidence of
unpatentability:
Stone US 2003/0078733 A1 Apr. 24, 2003
Olden et al., Modeling combined fluid and stress change effects in the
seismic response of a producing hydrocarbon reservoir, The Leading Edge,
Oct. 2001, pp. 1154, 1156-1160, 1162, and 1163 (hereinafter “Olden”).

The following rejection is before us for review:
Claims 1-6, 8-14, 16-22, 24-30, 32, 33, and 65-70 are rejected under
35 U.S.C. § 103(a) as unpatentable over Olden and Stone.

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OPINION
Appellants argue claims 1-6, 8-14, 16-22, 24-30, 32, 33, and 65-70 as
a group and we select independent claim 1 as the representative claim. See
App. Br. 8-18; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2-6, 8-
14, 16-22, 24-30, 32, 33, and 65-70 stand or fall with claim 1.
The Examiner finds that Olden substantially discloses the method of
independent claim 1, except that Olden does not disclose that “the stresses
used in the model are anisotropic.” Ans. 4. To cure Olden’s deficiency, the
Examiner turns to Stone for its teachings of a geomechanical model that
“allow[s] for an anisotropic stress tensor in the model.” Ans. 4-5. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art “to modify Olden to include the full stiffness matrix in the
geomechanical model that gives anisotropic stress in order to have a more
accurate model.” Ans. 5.
Appellants have three main arguments and offer objective evidence of
secondary considerations of non-obviousness which will be discussed in turn
infra. App. Br. 8 and Reply Br. 2. First, Appellants argue that none of
Olden, Stone, and the combination of Olden and Stone teaches that “a
change in anisotropic stress changes a seismic response” so that “there is no
incentive, motivation, teaching or suggestion for the claim element:
‘determining the change in a seismic attribute resulting from the
per[t]urbation in the anisotropic physical property’.” App. Br. 9.
We are not persuaded by Appellants’ argument. The Examiner is not
required to show that “a change in anisotropic stress changes a seismic
response.” Rather, the examiner is tasked with undertaking the factual
inquiries listed in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) in
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order to establish a prima facie case of obviousness. Here, the Examiner
determines the scope and content of the prior art by finding that Olden
discloses “[a]scertaing a perturbation of a[] physical property (stress of the
reservoir and surrounding formation) in a reservoir and in a surrounding
rock mass over time,” and “determining the change in seismic attribute
resulting from the physical property.” Ans. 4. The Examiner also
ascertained the differences between the prior art and the claims at issue by
recognizing that “Olden does not specifically state that the stresses used in
the model are anisotropic.” Id. The Examiner turned to Stone for its
teaching of “using a geomechanical model that incorporates the relationship
between stress, permeability, porosity, and pressures in the reservoir,” and
“instead of using simply the Young’s Modulus and Poisson’s ratio in the
geomechanical model, a full stiffness matrix can also be input to allow for
an anisotropic stress tensor in the model.” Ans. 4-5.
In addition to Graham’s factual inquiries, the examiner must articulate
some “reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006).
This reasoning must show that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The apparent reason need not appear in one or more
of the references on which the examiner relies. Instead, the examiner when
analyzing the evidence may employ common sense not inconsistent with the
ordinary level of knowledge and skill in the art at the time of the invention.
Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009). Here, the Examiner modified the ascertaining and determining steps
of Olden to be based upon anisotropic stress as taught by Stone instead of
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the physical property of Olden. See Ans. 5. We are satisfied that the
Examiner’s articulated reasoning has rational underpinning. Hence, we are
not persuaded of error in the Examiner’s rejection based upon this argument
of Appellants.
Second, Appellants argue that “the references are improperly
combined” in light of the evidence of record. App. Br. 9. Emphasis
omitted. More specifically, Appellants argue that “[t]here is no support in
the evidence of record that including anisotropic stress in the model will
make it more accurate,” and “there is no teaching in either Stone or Olden . .
. that anisotropic stress can be used in a model such as Olden’s.” App. Br.
10. In addition, Appellants argue that the Examiner’s reasoning is not based
on evidence and that the evidence of record actually refutes the Examiner’s
position. Id. More particularly, Appellants argue that the Declaration of
Jorg V. Herwanger filed May 2, 2008 (hereinafter “Herwanger Declaration”)
provides Dr. Herwanger’s opinion that it would not have been obvious to
one of ordinary skill in the art to combine Olden and Stone in the manner
proposed by the Examiner, and also provides objective evidence of this, i.e.,
“[i]f even some of those most skilled in the art still have difficulty believing
that the actual invention yields useful results, then what real world
motivation would an ordinarily skilled artisan have to combine Olden . . .
and Stone to achieve it?” App. Br. 10-11.
We are not persuaded by Appellants’ arguments. As stated supra, we
are satisfied that the Examiner’s articulated reasoning, i.e., to have a more
accurate model” (Ans. 5), has some rational underpinning. Since the
ordinary and customary meaning of the word “anisotropic” is “exhibiting
properties with different values when measured in different directions” (see
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MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY, TENTH EDITION 1997),
we agree that using anisotropic stress, instead of isotropic stress, would lead
to a more accurate model. In addition, we are not persuaded that the
evidence of record refutes the Examiner’s position. Although we appreciate
that Dr. Herwanger is an expert in the technology at issue in the present
application, Dr. Herwanger has not been found to be an expert in the field of
patent law, including obviousness under 35 U.S.C. § 103(a). Given this and
that Dr. Herwanger is one of the inventors with an interest in the outcome
that the patent application be allowed, we give Dr. Herwanger’s opinion, i.e.,
that it would not have been obvious to one of ordinary skill in the art to
combine Olden and Stone in the manner proposed by the Examiner (see
Herwanger Declaration, paras, 15-18), little weight. Further, Dr.
Herwanger’s opinion is not evidence and neither is the attorney argument
quoted supra concerning skepticism of others. See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) (An attorney's arguments in a brief cannot take the
place of evidence). Although the Herwanger Declaration recounts
“discussions” with Keith Hawkins, Paul Hatchell, and Olav Barkved (see
Herwanger Declaration, paras. 22-26), this is not evidence as we do not have
corroborating declarations from Mr. Hawkins, Mr. Hatchell, and Mr.
Barkved attesting to the fact that they indeed praised or were skeptical of the
subject matter of the present application.
Third, Appellants argue that “[t]here is [n]o [r]easonable [e]xpectation
of [s]uccess on the [e]vidence of [r]ecord.” App. Br. 13. Emphasis omitted.
Indeed, Appellants allege that the Herwanger Declaration “provides
objective evidence for this proposition,” i.e., “[i]f even some of the most
skilled in the art still have difficulty believing that the actual invention yields
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useful results, then how could one ordinarily skilled in the art reasonably
expect success from such a combination a priori?” Id.
To the extent Appellants are arguing there is no reasonable
expectation of success in the Examiner’s proposed combination, we are not
persuaded by this argument. Absolute predictability that the substitution
will be successful is not required. See In re O'Farrell 853 F.2d 894, 903-
904 (Fed. Cir. 1988). The Examiner has shown that Olden desired “a model
that has realistic parameters for the stress/permeability relationships” and
that Stone suggested a way that “instead of using simply the Young’s
Modulus and Poisson’ ratio in the geomechanical model, a full stiffness
matrix can . . . be input to allow for an anisotropic stress tensor in the
model.” Ans. 4-5. Appellants have not suggested any reason why the
Examiner erred by concluding that it would have been obvious to one of
ordinary skill in the art to incorporate a full stiffness matrix as taught by
Stone in order to have an anisotropic stress tensor in Olden’s model.
Appellants have also not suggested any reason why one of ordinary skill in
the art using an anisotropic stress as taught by Stone in Olden’s model would
not have had a reasonable expectation of success. Moreover, although we
appreciate that Olden’s model would have to be modified to include a full
stiffness matrix as taught by Stone, Appellants have not provided any
evidence that such a modification would be beyond the technical grasp of a
person of ordinary skill in the art. Thus, we are not persuaded that the
Examiner erred based on this argument of Appellants.
Fourth, Appellants argue that the Herwanger Declaration provides
secondary indicia of non-obviousness in the form of skepticism of others and
unexpected results. App. Br. 11.
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Inasmuch as we have concluded the subject matter of Appellants’
claims 1-6, 8-14, 16-22, 24-30, 32, 33, and 65-70 is prima facie obvious
from our analysis supra of Appellants’ first, second, and third arguments,
and because Appellants have furnished evidence in rebuttal of obviousness,
we now turn to consider this evidence. When such evidence is presented, it
is our duty to consider all evidence anew. See, e.g., In re Eli Lilly and Co.,
902 F.2d 943 (Fed. Cir. 1990). We are also mindful that objective evidence
of non-obviousness in any given case may be entitled to more or less weight
depending on its nature and relationship with the merits of the invention.
See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983). We
recognize that evidence of secondary considerations, such as that presented
by Appellants, must be considered in route to a determination of
obviousness/non-obviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of non-obviousness provided by Appellants.
Appellants submitted the Herwanger Declaration stating that Keith
Hawkins, “a well-recognized expert of many years in seismic data
processing with an interest in geomechanics” (Ans. 12), was skeptical of the
use of anisotropy when he “asked whether I really thought that anisotropic
velocity changes would affect time-lapse seismic data in a significant
manner, since he was using isotropic theory,” because he “had not seen an
obvious need to consider anisotropic physical characteristics”. See
Herwanger Declaration, paras. 22 and 24. The Herwanger Declaration also
notes the fact that “Keith Hawkins has extended his previous work to
include anisotropy.” See Herwanger Declaration, para. 23. The Herwanger
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Declaration recounts a discussion with Paul Hatchell of Shell Oil Company,
wherein Mr. Hatchell “questioned that the effects I was ascribing to
anisotropic velocity changes were caused by anisotropy,” because “[h]e said
that they had observed effects that I am explaining by anisotropic velocity
changes, but they believed that these effects were artifacts from data
collection.” See Herwanger Declaration, para. 25. Finally, the Herwanger
Declaration also states that “Olav Barkved approached me and encouraged
me that I am on the right track and mentioned that it would be a long haul
until I can convince the geophysical community of the validity of my ideas,
but that I was certainly on the right track.” See Herwanger Declaration,
para. 26.
We must first examine whether the Appellants have met their burden
of establishing a nexus between the claimed invention and the evidence of
secondary considerations. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996). To be given substantial weight in the determination of obviousness
or non-obviousness, evidence of secondary considerations must be relevant
to the subject matter claimed, and therefore the examiner must determine
whether there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). In particular, an applicant asserting secondary
considerations to support its contention of non-obviousness bears the burden
of proof of establishing a nexus between the claimed invention and evidence
of secondary considerations.
Although Appellants contend that “the evidence furthermore includes
the requisite ‘nexus’ with the claims at issue” (App. Br. 11), we are not
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persuaded that this is the case. The evidence of praise by and skepticism of
others provided by Appellants has not been shown to have any connection to
the claimed subject matter. Indeed, it has not been shown that either of Dr.
Herwanger’s presentations discussed in paragraphs 22 and 25, which
engendered the praise and the skepticism, set forth the subject matter of the
claims on appeal. In addition, the statements in the Herwanger Declaration
concerning Keith Hawkins, Paul Hatchell, and Olav Barkved (see
Herwanger Declaration, paras. 22-26) are hearsay as they have not been
corroborated by declarations from Mr. Hawkins, Mr. Hatchell, and Mr.
Barkved attesting to the fact that they indeed praised or were skeptical of the
subject matter of the present application. The evidence presented by
Appellants as to praise by and skepticism of others has not been shown to be
commensurate in scope with the claims. Accordingly, we find that
Appellants have failed to set forth sufficient evidence to establish praise by
and skepticism of others.
With respect to the purported unexpected results, i.e., “the reaction of
Keith Hawkins also demonstrates unexpected results in that even after being
presented with evidence of the invention’s efficacy, he approached Dr.
Herwanger to confirm whether it was true” (see App. Br. 11 (referring to
Herwanger Declaration, paras. 22-24)), the Herwanger declaration fails to
sufficiently show that the results were at all unexpected. Further, the
evidence presented by Appellants as to unexpected results has not been
shown to be commensurate in scope with the claims. Moreover, Stone’s
disclosure that a geo-mechanical model based on a full stiffness matrix
provides for a more realistic (accurate) model is inconsistent with
Appellants’ position that one of ordinary skill in the art would not have
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expected that the model of Olden and Stone would be more accurate. As
such, we find that Appellants have failed to set forth sufficient evidence to
establish unexpected results.
Obviousness Determination
Having now considered all evidence presented by Appellants against
obviousness and weighing all evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness. See
In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the Patent
Office’s case against the strength of appellant’s objective evidence of non-
obviousness). Based on our review and consideration of all of the evidence
before us, we conclude that the subject matter of claim 1 would have been
obvious to one having ordinary skill in the art at the time the invention was
made in view of the prior art. As such, we sustain the Examiner’s rejection
of independent claim 1, and claims 2-6, 8-14, 16-22, 24-30, 32, 33, and 65-
70 standing or falling with claim 1, under 35 U.S.C. § 103(a) as unpatentable
over Olden and Stone.

DECISION
We affirm the Examiner’s decision to reject claims 1-6, 8-14, 16-22,
24-30, 32, 33, and 65-70.
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
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