Ex Parte LI

Patent Trial and Appeal Board

Mar 26, 2018

13433570 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/433,570 03/29/2012 LilongLi
44639 7590 03/28/2018
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
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.
NMR4-51590-US/INT0477US 7918
EXAMINER
PARK,HYUND
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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 LILONG LI
Appeal2017-005471
Application 13/433,570
Technology Center 2800
Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-3, 5-8, and 12-19 in the above-identified
application. 2 We have authority pursuant to 35 U.S.C. § 6(b). We affirm.
1 Appellant identifies Baker Hughes Incorporated as the real party in interest.
Appeal Brief 2, July 25, 2016 [hereinafter Appeal Br.].
2 Final Office Action, Feb. 26, 2016 [hereinafter Final Action]; Examiner's
Answer, Dec. 20, 2016 [hereinafter Answer]; see also Appeal Br.; Reply
Brief, Feb. 15, 2017 [hereinafter Reply Br.].
Appeal2017-005471
Application 13/433,570
BACKGROUND
Appellant's invention relates to estimating properties of an earth
formation. Spec. 3 abstract. Appellant's disclosure includes, for example,
equations by which one may use nuclear magnetic resonance (NMR) data
from an earth formation to estimate its permeability. See Spec. i-fi-f 18-21.
Claim 15, reproduced below, is representative of the invention:
15. An apparatus for estimating a property of an earth
formation, the apparatus comprising:
a carrier configured to be conveyed through a borehole
penetrating the earth formation;
a nuclear magnetic resonance (NMR) tool disposed at the
carrier and configured to perform NMR measurements on a
sensitive volume in the formation to provide a distribution of
relaxation times;
a processor coupled to the NMR tool and configured to:
identify peaks in the distribution of relaxation times;
determine an area under each identified peak;
select a peak having a maximum underlying area from
the identified peaks;
select a plurality of other peaks from the identified peaks
using a selection criterion, wherein the selection
criterion comprises selecting a peak that is adjacent to
the peak having the maximum underlying area and the
adjacent peak has an area that meets or exceeds a
threshold; and
average the relaxation times for the peak having a
maximum underlying area and the plurality of other
peaks to provide an average relaxation time;
estimate the property using the average relaxation time;
a drilling rig for drilling a borehole based on the estimated
property.
3 Specification, Mar. 29, 2012 [hereinafter Spec.].
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Application 13/433,570
Appeal Br. 15-16 (formatting altered for clarity). Method claim 1 and
computer-readable medium claim 19 are also independent and include
similar limitations. See id. at 13-14, 16-17.
The Examiner maintains the following grounds of rejection:
1. Claims 1-3, 5-8, and 12-19 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. See Final Action 2-3; Answer 3---6.
2. Claims 15-18 are rejected under 35 U.S.C. § 101 as failing to
recite patentable subject matter. See Final Action 3--4, 6-8; Answer 7-13.
Appellant argues the rejected claims as a group. See Appeal Br. 5-11.
Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv), we limit our
discussion to independent claim 15, which is common to both rejections.
Claims 1-3, 5-8, 12-14, and 16-19 fall with claim 15.
DISCUSSION
Lack of Written Description
Claim 15 recites "a drilling rig for drilling a borehole based on the
estimated property." Appeal Br. 16. The Examiner finds that the original
disclosure does not support this limitation. Final Action 2-3. While
Figure 1 shows a drilling rig, the Examiner finds that "the original disclosure
does not disclose drilling based on the estimated property nor any kind of
invention to do so based on the estimated property, as claimed." Id. at 3.
Appellant points to paragraph 1 of the Specification, which states,
"Boreholes are drilled deep into the earth for many applications such as
hydrocarbon exploration, geothermal production, and carbon dioxide
sequestration. Different types of measurements are usually performed on a
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Application 13/433,570
geologic formation tools in order to efficiently use production resources."
Appeal Br. 6 (quoting Spec. i-f 1 ). According to Appellant, a person of
ordinary skill in the art "would understand that one type of production
resource for the applications disclosed above is a drilling rig." Id. (citing
Spec. i-fi-115, 24, Fig. 1 (disclosing the drilling rig and other associated
equipment for operating, analyzing, and controlling the apparatus and
methods disclosed in the Specification)). Appellant also argues that a skilled
artisan
would understand that the application is about efficiently using
production resources with respect to geologic formations by us-
ing more accurate estimates of formation properties. By effi-
ciently using production resources, production costs can be con-
trolled. Hence, the production resources can be used more effi-
ciently by using more accurate estimates of a formation property
with the apparatuses and methods disclosed herein.
Appeal Br. 6. Appellant argues that a skilled artisan would recognize
paragraph 1 of the Specification as an implied disclosure of using a drilling
rig for drilling a borehole based on the estimated property. See Reply Br. 2-
3.
In response, the Examiner finds that the portions of the Specification
relating to a drilling rig are for drilling boreholes for gathering data, not for
further drilling based on the estimated property. See Answer 5. The
Examiner also finds that paragraph 1 of the Specification does not
specifically refer to drilling a borehole based on the estimated property, just
"broad aspects of borehole operation in general terms," which can refer to
many other actions that take place after estimating a property. Id. at 5
(emphasis omitted). For example, the Examiner suggests one might use the
estimated permeability of an earth formation "for monitoring the integrity
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Application 13/433,570
and possible leakage in the drilled wellbore," and take actions such as
repairing a leak, treating fluid to reduce relative permeability, or plugging or
sealing off problem zones in a wellbore. Id. at 5---6.
The written description requirement asks "whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-1563 (Fed.
Cir. 1991)). The disclosure may convey possession of the invention "in any
way." In re Ruschig, 379 F.2d 990, 996 (C.C.P.A. 1967). However, "it is the
specification itself that must demonstrate possession." Ariad, 598 F.3d at
1352; cf Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) ("It is 'not a
question of whether one skilled in the art might be able to construct the
patentee's device from the teachings in the disclosure .... Rather, it is a
question whether the application necessarily discloses that particular
device."' (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))).
The Specification states, in the context of using drilled boreholes, that
measurements including permeability are useful "to efficiently use
production resources." Spec. i-f 1. The Specification also describes drilling
rigs and associated equipment in the context of drilling a borehole for
obtaining property measurements. See id. i-fi-1 15, 24, Fig. 1. However, the
Specification never specifically discloses, in any way that Appellant points
out, that one may use a drilling rig for drilling a borehole based on the
estimated property. Even if a skilled artisan would have found it obvious,
based on the Specification, to use an estimated property for subsequently
drilling a borehole, the Specification does not actually disclose using the
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Application 13/433,570
estimated property in this way. Thus, we find no reversible error in the
Examiner's finding that the Specification does not reasonably convey to a
skilled artisan that Appellant had possession of the claimed invention.
Ineligible Subject Matter
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347, 2355 (2014)
delineates a two-step framework for determining whether an invention is
ineligible for patent protection under 35 U.S.C. § 101. In the first step, we
must "determine whether the claims at issue are directed to a patent-
ineligible concept," such as a law of nature, natural phenomenon, or abstract
idea. Id. at 2355. In accordance with this step, the Examiner determines
that claim 15 is "directed to a judicial exception [to 35 U.S.C. § 101] (i.e., a
law of nature, a natural phenomenon, or an abstract idea)." Final Action 3.
In particular, the Examiner determines that the steps performed by the
recited processor "are directed to mathematical concepts (algorithms) and
human activity." Id. at 3--4. According to the Examiner, the steps "are
directed to [a] combination of human evaluation involving identification of
peaks and selecting peaks ... and usage of mathematical concepts involving
determining areas, averaging and estimating." Answer 11.
Appellant argues that the invention is not directed to an abstract idea,
but rather to the problem of "improving the efficient use of production
resources," which includes "using a drilling apparatus in conjunction with a
processor configured to execute a new and unobvious method that provides a
more accurate estimate of a formation property than was previously
available." Appeal Br. 8-9; see also Reply Br. 5---6 (citing McRo, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). According
to Appellant, the Examiner acknowledges that the steps performed by the
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Application 13/433,570
processor were new and unobvious. Appeal Br. 9 (citing Final Action 4---6).
Appellant also asserts that the recited rules regarding operations on peaks do
not preempt all processes for estimating a property of an earth formation
using NMR data. See Reply Br. 6-7.
In the Reply Brief, Appellant also argues that the Examiner has not
considered the claimed invention as a whole (including the carrier, the NMR
tool, and the drilling rig) in determining whether it is directed to a judicial
exception. See Reply Br. 4.
An invention is directed to a patent-ineligible concept if it "begins and
ends" with that concept. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1376 (Fed. Cir. 2015). This is the case, for example, when the
claims "amount[] to nothing more than observing or identifying the
ineligible concept itself." See Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1048 (Fed. Cir. 2016). For example, "collecting information,
including when limited to particular content (which does not change its
character as information) [is treated as] within the realm of abstract ideas."
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Likewise, "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category." Id. at 1354. A claim
directed to data collection and analysis remains an abstract idea if it recites
the use of generic, conventional equipment merely as tools to carry out the
data collection and analysis steps. See McRo, 837 F.3d at 1314 ("We ...
look to whether the claims ... focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
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that itself is the abstract idea and merely invoke generic processes and
machinery.").
Appellant does not contest the Examiner's determination, see
Answer 11-12, that the carrier, the NMR tool, and the processor used for
data collection are conventional machinery used in the drilling art. Nor does
Appellant contest the Examiner's determination, see id. at 13, that the
recited drilling rig is structurally indistinguishable from rigs known in the
prior art. Rather, Appellant characterizes the invention as "using [a] drilling
apparatus in conjunction with a processor configured to execute a new and
unobvious method that provides a more accurate estimate of a formation
property than was previously available." Appeal Br. 8-9. Thus, Appellant's
claimed inventive contribution begins with collecting data and ends with
analyzing it, although it uses conventional equipment as a tool in doing so.
The invention as a whole is therefore directed to an abstract idea.
The recitation of a "drilling rig" in claim 15 does not change the
nature of the invention as being directed to an abstract idea. Claim 15
recites a drilling rig that is "for drilling a borehole based on the estimated
property." However, we do not interpret this language as imposing any
structure on the drilling rig beyond that of a conventional drilling rig known
in the art. We give claims their broadest reasonable interpretation consistent
with the Specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1256
(Fed. Cir. 2007). Claim 15 is directed to an apparatus; thus, absent any
reference in claim 15 to the drilling rig's structure (e.g., some configuration
of the rig that depends on the estimated property), the broadest reasonable
interpretation of the limitation "for drilling a borehole based on the
estimated property" is an intended use of the drilling rig, which does not
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limit the claim. This is consistent with the Specification, which describes a
generic drilling rig and does not describe any extra steps or equipment for
drilling "based on the estimated property."
We are also unpersuaded by Appellant's argument regarding
preemption. While preemption is a driving concern for patent eligibility, see
Alice, 134 S.Ct. at 2354, "questions on preemption are inherent in and
resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.Ct. at 2354).
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the [Court's two-step] framework ... preemption
concerns are fully addressed and made moot." Id.
Consequently, because claim 15 is directed to a result (e.g., more
accurately estimating an earth formation property from NMR data) that is an
abstract idea, and merely invokes conventional processes and machinery to
achieve that result, the Examiner has not reversibly erred in determining that
claim 15 is directed to an abstract idea under step one of the Alice
framework.
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."' Alice, 134 S.Ct. at 2355 (quoting
Mayo Collaborative Svcs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)). Claim elements do not constitute an "inventive concept" if, apart
from the ineligible concepts themselves, they involve "well-understood,
routine, conventional activity previously engaged in by researchers in the
field." Mayo, 566 U.S. at 73.
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In accordance with this step, the Examiner determines that the claim
"does ... not include additional elements that are sufficient to amount to
significantly more than the judicial exception." Final Action 4. In
particular, according to the Examiner, the carrier configured to be conveyed
through the borehole, and the use of the NMR tool, "are merely extra-
solution activity as it pertains to known and conventional data collection
method[s]." Id.; see also Answer 11-12 (characterizing these steps as "well
understood, routine, conventional activities previously known to the
industry, recited at high level of generality." (emphasis omitted)). The
Examiner also determines that the "drilling rig for drilling a borehole based
on the estimated property" recites an intended use or function of the rig, and
does not limit the claim by requiring further action based on the estimated
property. See Final Action 4; Answer 13.
Appellant argues that the limitation "'a drilling rig for drilling a
borehole based on the estimated property' is a structural limitation that
performs a physical action that is significantly more than the abstract idea
alleged by the Examiner." Id. at 10. In the Reply Brief, Appellant also
argues that the Examiner has not considered the carrier and the NMR tool in
determining whether the invention is significantly more than the exception.
See Reply Br. 4--5. Appellant further argues that the invention is
significantly more than a judicial exception because it is an
"[i]mprovement[] to another technology or technical field," which according
to Appellant is "the field of hydrocarbon production technology." Reply
Br. 5 (quoting USPTO, 2014 Interim Guidance on Patent Subject Matter
Eligibility, if I.B.1 ).
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Application 13/433,570
As discussed above, we interpret the limitation "for drilling a borehole
based on the estimated property" in claim 15 to be an intended use for the
recited drilling rig, and not a constraint on its structure. Because the recited
carrier, NMR tool, processor and drilling rig are well-understood, routine,
and conventional equipment previously used in the industry, none of these
elements, either alone, in combination, or in combination with the abstract
idea, constitutes an inventive concept, such that the invention recited in
claim 15 is significantly more than the abstract idea itself.
To the extent that the algorithm for estimating a property recited in
claim 15 is an improvement to the art of hydrocarbon production technology,
this improvement is essentially attributable to the abstract idea itself, and it
is therefore not "significantly more" than the abstract idea. Cf Funk Bros.
Seed Co. v. Kalolnoculant Co., 333 U.S. 127, 131 (1948) (holding that an
invention directed to a natural principle, "however ingenious the discovery
of that natural principle may have been," was "no more than the discovery of
some of the handiwork of nature and hence is not patentable.")
For the above reasons, Appellant has not shown reversible error in the
Examiner's rejection of claim 15 or any of the other claims. Thus, we affirm
the Examiner's rejections of claims 1-3, 5-8, and 12-19.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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