Ex Parte Wu et al

Patent Trial and Appeal Board

Nov 20, 2017

14234621 (P.T.A.B. Nov. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/234,621 01/23/2014 Dagang Wu 2010-IP-039079 8325
112839 7590 11/22/2017
Tnmev T T P - HRS
EXAMINER
PO Box 22188
Houston, TX 77227-2188
NIMOX, RAYMOND LONDALE
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
ctumey@tumeyllp.com
j Hook @ tumeyllp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAGANG WU and LUIS E. SAN MARTIN
Appeal 2017-011623
Application 14/234,6211
Technology Center 2800
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the maintained
rejection under 35 U.S.C. § 101 of claims 1-12 and 16-20 as directed to
non-statutory subject matter.2 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Halliburton Energy Services, Inc. is identified as the real party in interest.
Appeal Br. 3.
2 The Non-Final Action dated September 6, 2016 (“Non-Final Act.”), from
which appeal is taken, sets forth the rejection under 35 U.S.C. § 101 of
claims 1-12 and 16-20. While claims 1-20 are identified as rejected on the
first page of the Non-Final Office Action, claims 13-15 should, rather, have
Appeal 2017-011623
Application 14/234,621
THE INVENTION
The subject matter of the claims on appeal relates to “multi-
component induction [petroleum well] logging with iterative analytical
conversion of tool measurements to formation parameters” that employs a
“processor employing] an iterative analytical conversion of. . . cross­
coupling measurements into formation resistive anisotropy and dip
information.” Specification filed January 23, 2014 (“Spec.”), Abstract.
Independent claims 1 and 16—reproduced below—are representative.
1. A logging method that comprises:
conveying a logging tool along a borehole through a formation
to gather multi-component transmitter-receiver coupling
measurements including diagonal coupling
measurements and cross-coupling measurements,
wherein the logging tool gathers the multi-component
transmitter-receiver coupling measurements using a tilted
transmitter and at least one receiver spaced from the
tilted transmitter;
obtaining, by a processor, from the cross-coupling
measurements and not from the diagonal coupling
measurements: a strike angle, an initial dip angle, an
initial anisotropy factor, and an initial conductivity;
determining, by the processor, from the cross-coupling
measurements, the strike angle, the latest dip angle, and
the latest anisotropy factor, and the latest conductivity: an
iterative anisotropy factor, an iterative conductivity, and
an iterative dip angle; and
providing a log based at least in part on at least one of said
iterative values.
been objected to as improperly depending from a rejected claim. See Non-
Final Act. 8.
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Application 14/234,621
16. A method for determining conductivity in a formation,
wherein the method comprises:
gathering, by a borehole logging tool, multi-component
transmitter-receiver coupling measurements using a tilted
transmitter and at least one receiver spaced from the
tilted transmitter;
receiving multi-component transmitter-receiver coupling
measurements including diagonal coupling
measurements and cross-coupling measurements
gathered by the borehole logging tool;
obtaining, by a processor, from the cross-coupling
measurements and not from the diagonal coupling
measurements: a strike angle, an initial dip angle, an
initial anisotropy factor, and an initial horizontal
conductivity;
determining, by the processor, from the cross-coupling
measurements, the strike angle, the latest dip angle, and
the latest anisotropy factor, and the latest conductivity: an
iterative anisotropy factor, an iterative horizontal
conductivity, and an iterative dip angle; and
displaying a log based at least in part on at least one of said
iterative values.
Appeal Brief filed February 2, 2017 (“Appeal Br.”), 19, 23-24.
DISCUSSION3
We have reviewed the grounds of rejection set forth by the Examiner,
Appellants’ arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly in determining that the
claims do not comply with 35 U.S.C. § 101. We add the following.
3 We refer to the Specification, the Non-Final Office Action, the Appeal
Brief, and the Examiner’s Answer issued June 19, 2017 (“Ans.”).
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Application 14/234,621
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt 7, 134 S. Ct.
2347, 2354 (2014). In Alice, the Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1300 (2012), in which it is first determined whether
the claims at issue are directed to one of those patent-ineligible concepts and
then, if it is, to determine whether there are additional elements that
“transform the nature of the claim” into a patent-eligible application of the
otherwise ineligible concepts. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132
S. Ct. at 1297). Claims directed to, or reciting, systems are also ineligible
under § 101 if the hardware recited by the claims add nothing of substance
to the underlying abstract idea. Alice, 134 S. Ct. at 2360.
“Information as such is an intangible” and, regarding the first step of
Alice, our reviewing court has “treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Elect. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Similarly, the Federal
Circuit “treat[s] 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.” Id. at 1354; see also Digitech
Image Technologies LLC v. Electronics for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014) (“Without additional limitations, a process that
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Application 14/234,621
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”).
Regarding the second step, an inventive concept that transforms an
abstract idea into a patent-eligible invention “may arise in one or more of the
individual claim limitations or in the ordered combination of the
limitations.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2355); see
also Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed.
Cir. 2016) (contrasting cases in which the claims were determined to be
eligible from those that were ineligible). In Amdocs, determining the claims
were eligible, the court explained that the claims were tied to a specific
structure of various components and required those components to operate in
an unconventional manner to achieve an improvement in computer
functionality. Amdocs, 841 F.3d at 1300-1301.
Here, the Examiner determines the claims subject to rejection are
directed to the abstract idea of using mathematical relationship s/algorithm,
including collecting information, analyzing it, and generating or displaying
certain results of the collection and analysis, to determine conductivity in a
formation and log data, recited in the “obtaining” and “determining” steps of
both claim 1 and claim 16. Final Act. 4-5, 6; Ans. 2-3, 6-7. As to claim 1,
the Examiner determines the additional elements recited, i.e., “conveying a
logging tool... to gather multi-component transmitter-receiver coupling
measurements . . . using a tilted transmitter and at least one receiver spaced
from the tilted transmitter” (claim 1), and use of a processor, are not
sufficient to amount to significantly more than the abstract idea. Final Act.
5-6; see also Ans. 3-5. As to claim 16, the Examiner likewise determines
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the additional elements recited, i.e., “gathering, by a borehole logging tool,
multi-component transmitter-receiver coupling measurements using a tilted
transmitter and at least one receiver spaced from the tilted transmitter; [and]
receiving multi-component transmitter-receiver coupling measurements”
(claim 16), use of a processor, and display of a log, are not sufficient. Final
Act. 6-7; see also Ans. 7-8. As explained by the Examiner, the additional
elements are recited at such a high level of generality that they amount to no
more than the application of the abstract idea itself, or otherwise add no
more than what is conventional computer implementation of the abstract
idea. Final Act. 5-7; Ans. 3-5, 7-8. The Examiner highlights that the
additional recited components simply acquire and output data for the
abstract idea and are not, accordingly, significantly more. Ans. 5, 8.
Appellants contend the additional elements do more than link the use
of the abstract idea to a particular technological environment. Appeal Br.
13-14. Appellants’ argument the Examiner erred is grounded on the
decision in Diamond v. Diehr, 450 U.S. 175 (1981). Appeal Br. 10-11, 13-
14. Appellants rely on Diehr for the proposition that “the claimed constant
measurement of temperature at a mold cavity of a rubber-molding press and
the claimed repetitive recalculation of the appropriate cure time . . . were
additional elements that provide[d] ‘something more’ than mere computer
implementation of calculation of a mathematical equation.” Appeal Br. 11;
Diehr, 450 U.S. at 184. Appellants argue that “the iterative value
determined from the cross-coupling measurements that inform the log is
similar to the additional elements of Diehr because . . . they are specific
measurements taken using specific hardware resulting in a specific output”
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and that the cross-coupling measurements, accordingly “also provide
‘something more.’” Appeal Br. 14.
Appellants further contend, without elaboration, that the “instant
additional elements are meaningful because cross coupling measurements
are not diagonal measurements, which if used exclusively, would result in
undesirable sensitivity to changes caused by thermal expansion, thermal
contraction, and mechanical impacts or vibration.” Appeal Br. 14.
Appellants’ argument grounded on Diehr is inapt and unpersuasive of
error. As highlighted by the Examiner (Ans. 5), the Court in Diehr found
the proposition “[t]hat respondents’ claims involve the transformation of an
article, in this case raw, uncured synthetic rubber, into a different state or
thing cannot be disputed” {Diehr, 450 U.S. at 184), determined that such
processes were historically patent eligible {id. th.8), and then concluded that
the use of a mathematical equation and programmed computer in the
claimed process did not render the methods non-statutory {id. at 185). In
contrast, Appellants’ claims do not recite the transformation of any article,
but only transformation of information in the collecting, analyzing, and
output of data, which is, as explained above, within the realm of abstract
ideas and is not patent eligible. See, e.g., Elect. Power Grp., 830 F.3d at
1353-54, Digitech Image Techs., 758 F.3d at 1351.
Appellants’ reliance on the contention that additional elements lessen
sensitivity to undesirable changes is not persuasive because value or
usefulness is not dispositive of patent eligibility. Parker v. Flook, 437 U.S.
584, 594-95 (1978) (Determining claims to “a new and presumably better
method for calculating alarm limit values,” which were of undisputed
usefulness, to be directed to nonstatuory subject matter.).
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Appellants contend that the Examiner erred because the additional
elements add unconventional steps and confine the claims to a particular
useful application—in effect that there is no risk of pre-emption. Appeal Br.
14-16. Appellants also contend that “the prior art does not suggest that any
audience is aware of using cross-coupling measurements using a tilted
transmitter and at least one receiver spaced from the tilted transmitter” and,
on this basis, argue the “instant additional elements add unconventional
steps.” Appeal Br. 15. Emphasizing the claimed method’s limited use to
borehole logging, Appellants contend that “[bjorehole logging is a particular
application performed for a particular purpose within a particular industry”
and argue that the Examiner “erred in rejecting the claims for subject matter
ineligibility.” Appeal Br. 15-16.
Similarly, Appellants separately contend that the additional elements
set forth in the claims were not well-understood, routine, or conventional as
determined by the Examiner, and that the recited elements are recited with
sufficient specificity to distinguish them from what is conventional. Appeal
Br. 16-17. Appellants argue that the recited diagonal coupling
measurements are not conventional (Appeal Br. 16) and that, as recited, “the
transmitter has a specific orientation, the log is based on values generated in
a specific way from particular measurements, and the location of the
receiver is defined with respect to the transmitter” {id. at 17). Citing the
Examiner’s reasoning as to computer components, Appellants further argue
that “the recited elements do not perform generic computer functions.”
Appeal Br. 17.
Appellants’ arguments are not persuasive of reversible error. The
analysis in the second step of the Alice!Mayo framework is not an evaluation
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Application 14/234,621
of novelty or non-obviousness, but rather, a search for ‘“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. Further, the novelty or non-obviousness
of the claims does not necessarily flow from what the claim adds to the
abstract idea. Cf. Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (“[A] claim directed to a newly discovered law of nature (or
natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.”). Even
if novel, judicial exceptions are patent ineligible absent further elements
amounting to significantly more that transform them into eligible subject
matter. The relied on use of diagonal coupling measurements and of “a
tilted transmitter and at least one receiver spaced from the tilted transmitter”
Appellants contend are not conventional do not, accordingly, transform the
ineligible subject matter, because they are not something more than, but are,
rather, part of the ineligible concept.
Appellants’ arguments grounded on claims being limited to a
particular useful application are also not persuasive because, however useful
the “log based at least in part on at least one . . . iterative value[]” (claims 1,
16) may be, the provided (or displayed) log is information that is not applied
to any useful end in either claim 1 or claim 16. Cf. In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) (“The invention disclosed in Hiniker’s
written description may be outstanding in its field, but the name of the game
is the claim.”). The value or usefulness is not dispositive of patent
eligibility. Parker v. Flook, 437 U.S. at 594-95.
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Appellants’ arguments as to the limited scope of the claims, and the
field to which they are suited, are not persuasive. First, the abstract idea
encompasses what Appellants set forth as further elements as these are part
of the process employing mathematical algorithms identified as the abstract
idea. Second, the question of pre-emption is not grounded on whether all
methods for accomplishing the intended goal are pre-empted, but rather on
whether the claim pre-empts application of the abstract idea embodied in the
claim. Third, the absence of complete pre-emption does not demonstrate
patent eligibility because even though the principle of pre-emption is the
basis for the judicial exceptions to patentability, the concern is fully
addressed and rendered moot where the claim is determined to disclose
patent ineligible subject matter under the two-part framework described in
Mayo and Alice. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). As explained in Alice, “the prohibition against
patenting abstract ideas cannot be circumvented by attempting to limit the
use of [the idea] to a particular technological environment.” Alice, 134 S.
Ct. at 2538 (internal citations and quotations omitted).
On this record, accordingly, we determine the claims are directed to
the abstract concept of using mathematical relationships/algorithm to
generate—from collected information—certain results of the collection and
determined values that are then used to generate, or to display, a log based at
least in part on determined values. Further, also as explained above, we
determine nothing in the claims that transform the nature of the claims into
patent-eligible application of the otherwise ineligible concepts.
On this record, we sustain the Examiner’s rejection of the claims
under 35 U.S.C. § 101.
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DECISION
The Examiner’s decision rejecting claims 1-12 and 16-20 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)(l)(iv).
AFFIRMED
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