HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals Board

Sep 2, 2020

2019006122 (P.T.A.B. Sep. 2, 2020)

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.
15/028,769 04/12/2016 Mathew Dennis Rowe 2012-061534 U1 US 2795
142050 7590 09/02/2020
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
DICKEY, THOMAS L
ART UNIT PAPER NUMBER
2826
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHEW DENNIS ROWE and
WALTER VARNEY ANDREW GRAVES
Appeal 2019-006122
Application 15/028,769
Technology Center 2800
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Halliburton
Energy Services, Inc. Appeal Br. 3.
Appeal 2019-006122
Application 15/028,769
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CLAIMED SUBJECT MATTER
The subject matter of the claims relates to computer software used in
well drilling. Spec. ¶¶ 8–9; claims 1, 11, and 16. The claims recite a
computer-implemented method (see, e.g., claim 1), a non-transitory
computer-readable medium storing instructions for executing the method
(see, e.g., claim 11), and a system including one or more processors and a
computer-readable medium storing the instructions executable by the one or
more processors to perform the method (see, e.g., claim 16).
According to the Specification, formation gas, i.e., gas trapped in a
subterranean formation, is released when a well is drilled. Spec. ¶ 8. This
released gas can be composed of different hydrocarbons at different
concentrations in different subterranean reservoirs. Spec. ¶¶ 3, 8. The gas
composition can serve as fingerprint for the reservoir as it identifies a
reservoir by its unique composition. Spec. ¶ 3. By determining the
composition’s fingerprint one can determine if a new well lies in a new
reservoir or lies in an extension of a previously discovered reservoir. Id.
Knowledge of the fingerprint also enables mapping the extent of the
reservoir and estimating the reservoir's size. Id. Fingerprinting requires
evaluating the extracted gas to determine the constituent species and their
concentrations. Spec. ¶ 8.
Appellant’s computer-implemented method corrects for deficiencies
in the gas extraction from the drilling fluid. Spec. ¶¶ 9–10. The method
implements a mathematical model based on Fick’s laws of diffusion. Spec.
¶ 9. The mathematical model is used to calculate two diffusion coefficients,
a theoretical diffusion coefficient and an experimental diffusion coefficient.
Spec. ¶ 9. The theoretical diffusion coefficient is calculated using a perfect
mass flux. Id. The experimental diffusion coefficient is determined using an
Appeal 2019-006122
Application 15/028,769
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experimental mass flux. Id. The difference in values is used to correct the
experimental data to the experimental mass flux. Id. This data is used to
determine a concentration of the gas at the formation. Spec. ¶ 41. Knowing
the composition and concentrations of the gas at different locations (e.g.,
depths) in the well can enable fingerprinting the formation gas. Spec. ¶ 10.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method of drilling a well
comprising:
determining a theoretical diffusion coefficient for a
drilling fluid comprising a gas from a formation, the theoretical
diffusion coefficient determined based on an extraction of all of
the gas from the drilling fluid;
determining an experimental diffusion coefficient for the
drilling fluid based on well drilling parameters including a flow
rate of the drilling fluid through the well;
determining a concentration of the gas at the formation
based, at least in part, on a difference between the theoretical
diffusion coefficient and the experimental diffusion coefficient;
and
providing the determined concentration of the gas at the
formation, wherein the determined concentration of the
formation gas enables fingerprinting the formation gas, the
fingerprinting used to:
determine if the formation gas is from a new gas
reservoir or is part of an existing gas reservoir;
enable mapping the extent of the new or existing
gas reservoir; and
estimate a size of the new or existing reservoir, the
fingerprinting performed while the well is being drilled.
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Application 15/028,769
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Appeal Br. 10.
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as patent
ineligible. Final Act. 2.

OPINION
The Examiner’s rejection is based on a determination that the claimed
invention is directed to a judicial exception (an abstract idea) without
significantly more. Final Act. 2; Ans. 4.
Appellant contends that claims 1, 11, and 16 are patent eligible after
applying the 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 PEG”)2. Appeal Br. 6. The issue is the
same for all the claims. Thus, we select claim 1 as representative.
The 2019 PEG provides a framework for evaluating questions of
patent eligibility. Under the framework, we look to see whether the claim
recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental processes),
(designated as Step 2A (Prong One) in the 2019 PEG); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (designated as
Step 2A (Prong Two)).

2 Updated October 17, 2019. See October 2019 Patent Eligibility Guidance
Update, available at uspto.gov/PatentEligibility.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception (designated as Step 2B).
The first issue we encounter relates to Step 2A, Prong One. Under
Step 2A, Prong One if the claim recites any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human interactions such as a fundamental economic
practice, or mental processes, we must move to Step 2A, Prong Two.
We agree with the Examiner that claim 1 recites abstract ideas. The
determining steps are steps of computing using Fick’s laws of diffusion and
other mathematical calculations. Spec. ¶¶ 16–41. These are mathematical
concepts and can be performed as mental processes.
Appellant contends that the determination of the concentration of the
gas at the formation (by the comparison of the theoretical and experimental
diffusion coefficients) identifies unique compositions of components of the
formation gas and this identification is not an abstract idea. Appeal Br. 6–7.
We are not persuaded by Appellant’s contention. The Specification
describes the step of determining a concentration of the gas at the formation
as a computer-implemented step based on determining the difference
between two values, the theoretical diffusion coefficient and the
experimental diffusion coefficient. Spec. ¶ 41. Taking the difference
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between two values is a mathematical operation. Nothing in the claim nor in
the Specification describes it as anything more. Thus, the determining steps
recite mathematical concepts and mental processes under Step 2A, Prong
One.
The second issue we encounter relates to Step 2A, Prong Two. Under
Prong Two if additional elements integrate the judicial exception into a
practical application, the claim is not directed to a judicial exception.
We agree with the Examiner that claim 1 fails to integrate the
mathematical and mental steps into a practical application.
To decide the question of whether claim 1 has additional elements
which integrate the judicial exception into a practical application, we must
identify the additional elements of claim 1.
First, we determine that the step of providing the determined
concentration of the gas at the formation, according to the Specification, is a
step of providing a value or data representing the concentration as an output
of the computer-implemented method. Spec. ¶ 42. The Specification
describes providing the determined concentration of the formation gas as, for
example, an output to an output device such as a monitor, a printer, or other
output device (id.), but claim 1 is not so limited. Providing the determined
concentration encompasses writing the concentration information on paper
or speaking the result of the calculation. In other words, providing the
determined concentration may be part of the mental process.
Second, we determine that the recitations after the word “enable”
convey abstract ideas. Enabling fingerprinting is not an affirmative method
step, it is merely the statement of a capability or what might be
accomplished in the future using the data. Outputting the concentration data
from the computer-implemented method enables fingerprinting, i.e., it
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allows fingerprinting to be possible. Articulating this possibility represents
an abstract concept performed in the human mind, i.e., a mental process
under Prong One.
Claim 1 further recites uses for fingerprinting and the timing of it. But
these potential uses and timing for fingerprinting are abstract because they
represent more aspects of the mental process of a wish or a plan to
accomplish fingerprinting. Again, claim 1 recites no affirmative step of
performing fingerprinting.
Thus, we determine that claim 1 recites four affirmative method steps,
three determining steps and one providing step. We further determine the
determining steps recite mathematical concepts and the providing step is a
step of reporting the result of the mathematical calculations that can be
performed as a mental step and further recites what the reporting of the
result enables, which is a further abstract concept.
Now that we have determined which portions of the claim 1 recite
abstract ideas, we turn to the question of Prong Two. In Prong Two, we
“evaluate whether the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” 2019 PEG at 54. To
integrate the judicial exception into a practical application, the claim must
“apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id.
Appellant contends that the claims pass Prong Two because the
claimed fingerprinting is a practical application of the determination of the
concentration of formation gas that is performed “‘in a manner that imposes
a meaningful limit’ on the comparison of the theoretical and experimental
diffusion coefficients that is ‘more than a drafting effort designed to
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monopolize’ the comparison of the theoretical and experimental diffusion
coefficients.” Appeal Br. 7. Although we agree with Appellant that
fingerprinting is an application of the calculations, the manner in which
fingerprinting is described in the claim does not impose a meaningful limit
on the claim. There are no affirmative steps of performing fingerprinting in
claim 1.
Further, the required integration is not present because the claim
merely recites instructions for implementing an abstract idea (mathematical
calculations) on a computer and what that calculation enables. The computer
is used as a tool to perform calculations and the method is not an
improvement to the computer. Such generic computer implementation is not
sufficient to transform an abstract idea into a patent eligible process or
device. Alice, 573 U.S. at 223–24 (“wholly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself’” (quoting Mayo, 566
U.S. at 77)); Electric Power Group, 830 F.3d at 1355 (“the claims’
invocation of computers, networks, and displays does not transform the
claimed subject matter into patent-eligible applications”).
Appellant presents no persuasive arguments against the Examiner’s
determination that claim 1 fails to provide an inventive concept. As
Appellant does not challenge the Examiner’s evaluation under Step 2B of
the 2019 PEG, Appellant has not identified a reversible error in the
Examiner’s Step 2B determination.
Appellant has not identified a reversible error in the Examiner’s
determination that the claims are ineligible for a patent.

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Application 15/028,769
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CONCLUSION
The Examiner’s decision to reject claims 1–20 is AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
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