Ex Parte VENKATARAMANAN et al

Patent Trial and Appeal Board

Nov 6, 2018

13333232 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/333,232 12/21/2011
37003 7590 11/08/2018
SCHLUMBERGER-DOLL RESEARCH
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
FIRST NAMED INVENTOR
LALITHA VENKATARAMANAN
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.
ISl 1.0529-US-NP 1552
EXAMINER
STIFTER JR, TERENCE E
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
USDocketing@slb.com
jalverson@slb.com
JScott19@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LALITHA VENKATARAMANAN,
TAREK M. HABASHY, FRED K. GRUBER, and
DENISE E. FREED
Appeal2017-009877
Application 13/333,232
Technology Center 2800
Before JEFFERY T. SMITH, JAMES C. HOUSEL, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-19 and 21-29. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellants claim a method of characterizing a subterranean formation.
App. Br. 2-3. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1 Appellants identify Schlumberger Technology Corporation as the real party
in interest. Appeal Brief filed February 3, 2017 ("App. Br."), 2.
Appeal2017-009877
Application 13/333,232
1. A method of characterizing a subterranean formation,
compnsmg:
performing a nuclear magnetic resonance (NMR)
measurement on the subterranean formation using an NMR
apparatus to obtain NMR data in a measurement-domain,
wherein the NMR apparatus performs the NMR measurement
on the subterranean formation by applying a NMR pulse
sequence to the subterranean formation;
calculating an answer product for a desired area within a
distribution-domain by computing an integral transform for the
desired area on the NMR data in the measurement domain,
wherein the desired area within the distribution-domain is a
subset of the distribution domain; and
using the answer product to estimate a property of the
formation.
App. Br. 9 (Claims Appendix).
The Examiner sets forth the rejection of claims 1-19 and 21-29 under
35 U.S.C. § 101 in the Final Office Action entered July 28, 2016 ("Final
Act."), and maintains the rejection in the Examiner's Answer entered April
28, 2017 ("Ans.")
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affirm the Examiner's rejection of
claims 1-19 and 21-29 under 35 U.S.C. § 101 for the reasons set forth in the
Final Office Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each ground of rejection
Appellants contest. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d
1072, 107 5 (BP AI 2010) (precedential), cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
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had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections").
Appellants argue claims 1-19 and 21-29 as a group on the basis of
claim 1, to which we accordingly limit our discussion. App. Br. 4--8;
37 C.F.R. § 4I.37(c)(l)(iv).
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Court identified a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under § 101. In
the first step, "[ w ]e must ... determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. The second step involves "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,"' and is more than "well-understood,
routine, conventional activit[y]." Alice, 134 S. Ct. at 2355, 2359 (first
alteration in original) ( quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner applies Alice's two-step framework in rejecting claim 1
under 35 U.S.C. § 101. Ans. 3-8. In the first step, the Examiner determines
that calculating an answer product by computing an integral transform on
NMR data, and using the answer product to estimate a property of a
subterranean formation, is directed to an abstract idea. Ans. 2. The
Examiner determines that these steps involve processing NMR measurement
data using mathematical relationships and formulas to calculate an answer
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Application 13/333,232
product used to estimate a property of a subterranean formation, which the
Examiner determines is similar to other concepts that have been identified
by the Federal Circuit as abstract, such as collecting information, analyzing
it, and displaying certain results of the collection and analysis (Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), and a formula for
computing an alarm limit (Parker v. Flook, 437 U.S. 584 (1978)). Id.
For the second step of the Alice framework, the Examiner determines
that the additional elements recited in claim 1 do not amount to significantly
more than the judicial exception (the abstract idea). Id. Specifically, the
Examiner determines that performing an NMR measurement on a
subterranean formation using an NMR apparatus by applying an NMR pulse
sequence to the subterranean formation is a mere data gathering step that
uses conventional measurement equipment. Id. The Examiner determines
that claim 1 therefore does not amount to significantly more than a claim to
the abstract idea itself. Id.
Appellants argue that claim 1 is not directed to an abstract idea, but
rather is directed to solving a problem of a technical and industrial nature:
estimating a property of a subterranean formation using nuclear magnetic
resonance (NMR). App. Br. 4. Appellants contend that the method of claim
1 uses physical actions (performing NMR measurements on a subterranean
formation using an NMR apparatus) and real world subject matter (an NMR
apparatus, NMR data, and physical properties of the formation) to overcome
a technical and industrial problem. App. Br. 5. Appellants assert that claim
1 does more than merely limit the claimed method to a particular
technological environment, such as limiting the method to performance on a
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general purpose computer, because the "claim ties the method to a manner of
performing NMR measurements and processing the data from the NMR
measurements to determine a property of a subterranean formation." Id.
Appellants argue that claim 1 does not preempt all processes for estimating
properties of a subterranean formation using NMR measurements and an
integral transform, because the claim recites a specific manner of applying
the integral transform. App. Br. 5.
Claim 1 recites calculating an answer product for a desired area within
a distribution-domain by computing an integral transform for the desired
area on NMR data in the measurement domain, and using the answer
product to estimate a property of the formation. These steps, taken
individually, are directed to the abstract idea of manipulating or analyzing
data or information (NMR data) to generate additional data or information
(an answer product and a property of a subterranean formation). Merely
combining these abstract steps as recited in claim 1 fails to render the
combination any less abstract. See Digitech, 7 5 8 F .3 d at 13 51 ("Without
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible."); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093 (Fed. Cir. 2016) (abstract ideas include collecting information and
analyzing that information "by steps people go through in their minds, or by
mathematical algorithms"); Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146-47 (Fed. Cir. 2016) ("[W]e continue to 'treat[] analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
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Application 13/333,232
abstract-idea category."' (second alteration in original) ( citation omitted));
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340-
41 (Fed. Cir. 2017) ( organizing, displaying, and manipulating data is an
abstract idea).
The step recited in claim 1 of performing a nuclear magnetic
resonance (NMR) measurement on a subterranean formation using an NMR
apparatus to obtain NMR data in a measurement-domain by applying an
NMR pulse sequence to the subterranean formation constitutes mere data
gathering using conventional equipment. Thus, claim 1 is directed to
conventional data gathering, and carrying out computations on the gathered
data to generate new data or information----corresponding to a mathematical
algorithm. The features of claim 1, considered individually and as an
ordered combination, therefore, do not constitute an inventive concept that
transforms the abstract idea into a patent-eligible application of the abstract
idea. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed.
Cir. 2014) (holding the claims insufficient to supply an inventive concept
because they did not "do significantly more than simply describe [the]
abstract method," but rather are simply "conventional steps, specified at a
high level of generality" (quoting Alice, 134 S. Ct. at 2357)); In re Bilski,
545 F.3d 943, 963 (Fed. Cir. 2008) (en bane) (characterizing data gathering
steps as insignificant extra-solution activity.)
Although Appellants argue that the method of claim 1 overcomes the
technical and industrial problem of estimating a property of a subterranean
formation using nuclear magnetic resonance (NMR), Appellants do not
direct us to any factual evidence supporting this conclusory assertion, such
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as evidence of record comparing Appellants' method to the existing
technology. App. Br. 4--8. Unsupported attorney arguments cannot take the
place of evidence necessary to resolve a disputed question of fact. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination."); In re Schulze, 346 F.2d
600, 602 ( CCP A 1965) ("Argument in the brief does not take the place of
evidence in the record.").
Although claim 1 is directed to a specific process that involves
"performing NMR measurements and processing the data from the NMR
measurements to determine a property of a subterranean formation," as
Appellants assert, it is nonetheless directed to manipulating or analyzing
data or information to generate additional data or information ( discussed
above), and therefore constitutes a procedure for solving a mathematical
problem-referred to by the courts as an "algorithm"- corresponding to an
abstract idea. Gottschalk v. Benson, 409 U.S. 63, 65 (1972) (A procedure
for solving a given type of mathematical problem is known as an
"algorithm."). Accordingly, contrary to Appellants' arguments, a patent to
claim 1 would pre-empt use of the algorithm itself, rather than a patent-
eligible application of the algorithm, and claim 1 is therefore ineligible for
patenting. Parker v. Flook, 437 U.S. 584, 595 (1978) ("if a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory."
(internal quote marks omitted)).
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Appellants argue that claim 1 is directed to significantly more than an
abstract idea by itself because the claim is directed to improvements in
oilfield technology and NMR technology. App. Br. 6. Appellants contend
that the method of claim 1 can be used to obtain more stable and reliable
estimates for specific portions ofNMR distributions "as compared to the
conventional Laplace transform method that is typically used in NMR," and
can be used to provide more reliable estimates for certain properties of the
subterranean formation, such as porosity or permeability. Id.
As discussed above, however, claim 1 is directed to conventional data
gathering, and carrying out computations on the gathered data to generate
new data or information----corresponding to a mathematical algorithm.
Accordingly, the features of claim 1, considered individually and as an
ordered combination, do not constitute an inventive concept that transforms
the abstract idea into a patent-eligible application of the abstract idea.
Appellants do not direct us to any factual evidence supporting the asserted
improvements in oilfield and NMR technology, such as evidence of record
comparing Appellants' method to the existing technology, including the
Laplace transform method. App. Br. 4--8; Schulze, 346 F.2d at 602 (CCPA
1965).
Appellants argue that claim 1 is directed to significantly more than an
abstract idea by itself because the claim requires performing NMR
measurements on a subterranean formation using a specific machine-an
NMR apparatus-that applies an NMR pulse sequence to the subterranean
formation. App. Br. 7.
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Appellants' Specification indicates, however, that NMR machines are
conventionally used in the art to apply a pulse sequence to subterranean
formations. Spec. ,r,r 2-5. Therefore, as discussed above, performing a
nuclear magnetic resonance (NMR) measurement on a subterranean
formation using an NMR apparatus to obtain NMR data in a measurement-
domain by applying a NMR pulse sequence to the subterranean formation
constitutes mere data gathering using conventional equipment.
Appellants argue that claim 1 is directed to significantly more than an
abstract idea by itself because the claimed method requires performing NMR
measurements on a subterranean formation by applying an NMR pulse
sequence to the formation. App. Br. 7. Appellants contend that this
application of an NMR pulse excites nuclei within the formation, which
transforms the nuclei from an unexcited state to an excited state, thereby
effecting a transformation or reduction of a particular article to a different
state or thing. Id.
Contrary to Appellants' arguments, the method of claim 1 is not
analogous the claimed method in Diamond v. Diehr, 450 U.S. 175, 184--85
(1981), which involved operating a rubber mold to transform raw, uncured
synthetic rubber into cured rubber. Although applying NMR pulses to a
formation as recited in claim 1 may temporarily excite nuclei within the
formation, the nuclei nonetheless rapidly return to their original state (known
as "relaxation"). Spec. ,r,r 2--4. Even if the temporary excitation of nuclei
within a subterranean formation were considered transformation of the
nuclei into a different state or thing, as discussed above, using an NMR
apparatus to obtain NMR data by applying an NMR pulse sequence to a
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subterranean formation as recited in claim 1 constitutes mere data gathering
using conventional equipment, and therefore does not transform the recited
abstract idea into a patent eligible application of the abstract idea.
Appellants argue that claim 1 is directed to significantly more than an
abstract idea by itself because the step of "calculating an answer product for
a desired area within an NMR distribution-domain by computing an integral
transform for the desired area on[] NMR data in [a] measurement-domain,
wherein the desired area within the NMR distribution-domain is a subset of
the NMR distribution-domain," is an unconventional step that is not
disclosed in any of the prior art references that were cited previously during
prosecution of the present application in prior art rejections. App. Br. 7-8.
However, a "claim for a new abstract idea is still an abstract idea."
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
Therefore, Appellants' arguments are unpersuasive of reversible error
in the Examiner's rejection of claims 1-19 and 21-29 under 35 U.S.C.
§ 101, which we accordingly sustain.
DECISION
We affirm the Examiner's rejection of claims 1-19 and 21-29 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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