Landmark Graphics Corporation

Patent Trials and Appeals Board

Jul 15, 2020

2019002844 (P.T.A.B. Jul. 15, 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.
14/365,520 06/13/2014 John Edwin Killough 7523.768 1032
27683 7590 07/15/2020
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
JOHANSEN, JOHN E
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN EDWIN KILLOUGH
____________________

Appeal 2019-0028441
Application 14/365,520
Technology Center 2100
____________________

Before ERIC S. FRAHM, CARL L. SILVERMAN, and JOYCE CRAIG,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Introduction
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).

1 Throughout this Opinion, we refer to: (1) the Final Office Action mailed
March 1, 2018 (“Final Act.”); (2) the Appeal Brief filed October 26, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed January 8, 2019 (“Ans.”);
and (4) the Reply Brief filed February 26, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
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We affirm the patent-eligibility rejection, and reverse the obviousness
rejection, of claims 1 through 21.
Appellant’s Disclosed and Claimed Invention
Appellant’s invention, entitled “SYSTEM AND METHOD FOR
SIMULATION OF GAS DESORPTION IN A RESERVOIR USING A
MULTI-POROSITY APPROACH” (Title), relates to using modeling and
simulation for reservoirs containing petroleum to assist with developing new
fields and generating production forecasts for those fields (see Spec. 1:8–
12). Reservoir simulation predicts fluid transport (e.g., for petroleum, water,
and gas) by linearly solving equations using transfer terms for different
porosity types. Prior art reservoir simulations use a dual porosity technique,
based on two types of porosity (usually rock matrix pore systems and
fracture pore systems).
Appellant recognized that “because of the geologic complexities of
shale reservoirs, traditional dual porosity reservoir modeling techniques do
not adequately predict mass transfer and fluid flow characteristics of shale
reservoirs” (Spec. 2:17–20). To better predict shale reservoir characteristics,
Appellant utilizes a tri-porosity system for simulation by either splitting
facture pore systems into two groups (natural and induced fracture pore
systems), or including computations for vug pore systems. Appellant’s
claimed invention concerns “[a] method for performing simulation of a shale
reservoir represented by a model” (claim 1) using “a computer” (claim 18)
(see Fig. 1, computer system 100 and processor 102) that models for “at
least three different porosity types for the modeled reservoir” (claim 1, 18).

identifies the real party in interest as Landmark Graphics Corporation
(Appeal Br. 2).
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Exemplary Claim
Independent claim 1 under appeal is exemplary. Claim 1, with
bracketed lettering, formatting, and emphases added to key portions of the
claim at issue, reads as follows:
1. A method for performing simulation of a shale reservoir
represented by a model, the method comprising computer-
implemented steps of:
[A] characterizing at least three different porosity
types for the modeled reservoir, the at least three different
porosity types selected from the group consisting of [A1]
natural fracture pore systems, [A2] matrix pore systems,
[A3] induced fracture pore systems and [A4] vug pore
systems;
[B] identifying transfer terms between the at least
three porosity types;
[C] solving a linear system for the model using a linear
solver;
[D] designing a well completion plan using the model;
and
[E] drilling a wellbore according to the well
completion plan.

Appeal Br. 13, Claim Appendix (emphases, formatting, and bracketed
lettering added). Remaining independent claim 18 recites “[a] computer
program product comprising non-transitory computer-readable medium
having stored thereon instructions executable by a computer” to perform the
computer-implemented steps of claim 1, and is thus commensurate in scope
with the method of claim 1.
Examiner’s Rejections
(1) Claims 1–21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (an abstract idea), without
significantly more. Final Act. 11–19; Ans. 3–5.
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(2) Claims 1–21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fung (US 2012/0179436 A1; published July 12, 2012)
and Ortoleva (US 2002/0013687 A1; published Jan. 31, 2002). Final Act.
19–14.
Appellant’s Contentions
(1) With regard to the patent eligibility rejection, Appellant primarily
makes arguments regarding claims 1 and 18, relies on those arguments for
the eligibility of claims 2–17 and 19–21, and generally contends the claims
are not directed to an abstract idea (e.g., math concepts, methods of
organizing human activity, mental processes), but to improvements in a
technological field/process (see Appeal Br. 4–8; Reply Br. 3–5). Appellant
contends “the claims are directed to an approach to characterize at least three
different porosity types, identify transfer terms between those porosity types,
solve a linear system for the model, design a well completion plan, and drill
a wellbore accordingly” (Reply Br. 6), and therefore “the claims recite a
practical application that uses the recited model to design and drill a
wellbore” (Reply Br. 6).
Therefore, based on Appellant’s patent eligibility arguments, and
because claims 1–21 contain commensurate limitations, we select claim 1 as
representative of claims 1–21 rejected under 35 U.S.C. § 101 for patent-
ineligibility.
(2) With regard to the obviousness rejections of claims 1–21,
Appellant primarily argues the merits of independent claims 1 and 18 (see
Appeal Br. 8–11; Reply Br. 3–5), and relies on those arguments for the
patentability of remaining dependent claims 2–17 and 19–21. Appellant
primarily argues (Appeal Br. 8–11; Reply Br. 3–5) that neither Fung nor
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Ortoleva teach tri-porosity modeling as set forth, for example, in limitation
A of claim 1.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 3–
12) and the Reply Brief (Reply Br. 2–6), the following principal issue is
presented on appeal:
(1) Has Appellant shown the Examiner erred in rejecting
representative claim 1, as well as claims 2–21 grouped therewith, under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter (i.e., a
judicial exception such as an abstract idea), without significantly more?
(2) Did the Examiner err in rejecting claims 1–21 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Fung and Ortoleva,
because the Examiner fails to show either reference or the combination,
teaches or suggests disputed limitation A recited in claim 1, and as
commensurately recited in claim 18?

ANALYSIS
Issue (1): Patent Eligibility Under 35 U.S.C. § 101
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under the Guidance, we first look to
whether the claim recites:

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, updating and clarifying the Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev.
08.2017, 2018) (“Step 2A, Prong 2”).4
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 (“Step 2B”).
See Guidance, 84 Fed. Reg. at 54–56.
Even if the claim recites an abstract idea, the Federal Circuit explains
the “directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical

2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance — Section III(A)(2), 84 Fed. Reg. 54–
55.
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products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether “their character as a
whole is directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Step 1
Under Step 1 of the patent-eligibility inquiry under § 101, we
determine whether a claim is directed to one of the four statutory categories
of invention, i.e., a process, machine, manufacture, or composition of matter.
In the instant case on appeal, representative claim 1 recites “[a] method for
performing simulation of a shale reservoir represented by a model, the
method comprising computer-implemented steps” (claim 1, preamble) to
solve modeling equations (see claim 1, limitations A–C), design a well
completion plan (see claim 1, limitation D), and drill a wellbore (see claim
1, limitation E). Therefore, claim 1, as a method claim, recites at least one
of the enumerated categories (e.g., a process having a series of steps) of
eligible subject matter in 35 U.S.C. § 101.
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As a result, as to claim 1, as well as claims 2–21 grouped therewith,
we continue our analysis under Step 2A, Prong 1 of the Guidance to
determine whether claim 1 recites a judicial exception (a law of nature,
natural phenomenon, or subject matter within the enumerated groupings of
abstract ideas above).
Step 2A, Prong 1
The Guidance states that the abstract idea exception includes mental
processes, which include “concepts performed in the human mind (including
an observation, evaluation, judgment, opinion).” Guidance, 84 Fed. Reg. at
52. Such concepts must be capable of being practically performed in the
human mind, although the use of a physical aid, such as a pen and paper, or
a computer does not negate the mental nature of such a concept. October
2019 Update: Subject Matter Eligibility Guidance (hereinafter, 2019
Update) 8–9 (October 2019), available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df.
We agree with the Examiner’s determination (see Final Act. 12–13;
Ans. 3–4) that claim 1 recites limitations falling within the mental process
category of abstract ideas, including the steps of “collecting and
characterizing different porosity types for a modeled reservoir and analyzing
the results by identifying the transfer terms and solving a linear system”
(Ans. 3). Although claim 1 recites a method comprising computer-
implemented steps that are impliedly performed by a computer (see claim 1),
the focus of claim 1 is on performing the steps of a mental process (see
Gottschalk v. Benson, 409 U.S. 63, 67 (1972), i.e., characterizing porosity
types and identifying transfer terms (see claim 1, limitations A, B) for
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solving equations (see claim 1, limitation C) used to design a well
completion plan (see claim 1, limitation D) for drilling a wellbore (see claim
1, limitation E). Here, we conclude representative claim 1 recites a mental
process (i.e., a concept performed in the human mind, such as, an
observation, evaluation, judgment, and opinion), which is an abstract idea.
See Guidance, 84 Fed. Reg. at 52; Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“analyzing information by
steps people [can] go through in their minds, or by mathematical
algorithms, without more [are] mental processes within the abstract-idea
category.”); Clarilogic v. Formfree Holdings, 681 F. App’x. 950, 954–55
(Fed. Cir. 2017) (gathering, analyzing, and outputting financial
data/assessment is an abstract idea that is patent ineligible).
The limitations that make up the concept recited in representative
claim 1 are simply a series of observations, evaluations, and judgements for
determining data (e.g., porosity types and transfer terms) used to solve a
linear system, and design a plan used to drill a wellbore. Limitations A–D
recite the types of observation, evaluation, and judgment that are
characteristic of mental processes that may be practically performed in the
human mind, or with the aid of pen and paper. See Synopsys, 839 F.3d at
1146 (“While the Supreme Court has altered the § 101 analysis since
CyberSource in cases like Mayo and Alice, we 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
abstract-idea category.’”) (quoting Elec. Power Group, LLC v. Alstrom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016)); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
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processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”);
Benson, 409 U.S. at 67.
Appellant’s contention that claim 1 does not “recite a mental process
because the steps are not practically performed in the human mind” (Reply
Br. 2), is unpersuasive. Claim 1 merely implies a computer performs the
entire process set forth in limitations A through E because the method is
recited as containing “computer-implemented steps,” but no computer or
processor or other device is positively set forth in the claim.5 With this in
mind, and the lack of any further description, or requirements as to the
composition, of the computer implied by the recitation of a “computer-
implemented process” (see claim 1, preamble), the broadest reasonable
interpretation of any implied “computer” in claim 1 could include the human
mind. And, even if claim 1 were limited to the computer devices described
in the Specification (see e.g., the generic computer components show in Fig.
1; Spec. 4:15–25), any computer device is simply used as a tool to perform
the recited process. The Guidance explains that “mental processes” include
acts that people can perform in their minds or using pen and paper, even if
the claim recites that a generic computer component performs the acts. See
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of

5 Although a person of ordinary skill in the art would understand a computer
could be capable of instructing a machine and/or drill to perform the
“drilling a wellbore” recited in limitation E of claim 1, that artisan would
also understand that a person, drilling apparatus, or other equipment might
be needed to perform the operation recited in limitation E. (Not sure the
point here?)
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generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
Guidance, 84 Fed. Reg. at 52 n.14.
Thus, claim 1 is “not directed to an improvement in the way
computers operate” and “the focus of the claims is not on . . . an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools.” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1095 (Fed. Cir. 2016).
Thus, consistent with the Guidance and case law, we conclude
representative claim 1 recites mental processes (i.e., concepts performed in
the human mind, such as, an observation, evaluation, judgment, and
opinion), which are abstract ideas. See Guidance, 84 Fed. Reg. at 52;
Guidance Update, 7–9; Digitech Image Techs., LLC v. Elecs. For Imaging,
Inc., 758 F.3d 1344, 1351 (2014) (concluding claims reciting receiving two
data sets, and combining those data sets into a single data set is “an
ineligible abstract process of gathering and combining data”); CyberSource
654 F.3d at 1372–73 (concluding claims reciting obtaining a data transaction
set affiliated with a particular Internet address, generating a map based on
those transactions, and using the map to determine whether a transaction is
valid were abstract because they were directed to steps a person could
perform mentally); Elec. Power Group, 830 F.3d at 1353–54 (concluding
claims directed to “collecting information, analyzing it, and displaying
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certain results of the collection and analysis” were abstract); SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (concluding claims
were directed to the abstract idea of “selecting certain information, analyzing
it using mathematical techniques, and reporting or displaying the results of
the analysis”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361–
62 (Fed. Cir. 2015) (determining claims reciting obtaining statistics,
analyzing those statistics to determine another piece of information—i.e., a
price at which to sell a product—was directed to the abstract idea of offer-
based price optimization).
Our reviewing court has also concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014); see also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873
F.3d 1364, 1372 (Fed. Cir. 2017) (concluding “claims directed to the
collection, storage, and recognition of data are directed to an abstract idea”).
Moreover, our reviewing court has concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018). In addition, the collection of
information and analysis of information (e.g., recognizing certain data
within the dataset) are also abstract ideas. Elec. Power Grp., 830 F.3d at
1353. Similarly, “collecting, displaying, and manipulating data” is an
abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) (“merely presenting the results of
abstract processes of collecting and analyzing information . . . is abstract as
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an ancillary part of such collection and analysis”) (quotations omitted). In
this light, reconciling data with the use of processor, is similar to the
concepts of collecting, parsing, comparing, storing, and analyzing data
recognized by our reviewing court to be abstract ideas. The network service
management process set forth in claim 1 also collects information (e.g.,
performance metrics and forecast models) for analysis and analyzes that data
(e.g., forecasting network service demand to perform capacity planning in
order to dispatch network service resources). Similarly, Appellant’s
recitations in claim 1 of characterizing and identifying information (porosity
types in limitation A and transfer terms in limitation B), and analyzing the
information (solving a linear system in limitation C) to design a well
completion plan (limitation D) are abstract ideas.
Because we conclude claim 1 recites a mental process which is an
abstract idea, we proceed to Step 2A, Prong 2 of the Guidance to determine
whether claim 1 is “directed to” the judicial exception, by determining
whether additional elements of the claim integrate the abstract idea into a
practical application. Such additional elements may reflect an improvement
to a technology or technical field. See Guidance, 84 Fed. Reg. at 55.
Step 2A, Prong 2 – Practical Application
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the Guidance, whether claim 1 is
directed to that abstract idea, or whether the claims have additional elements
that integrate the abstract idea into a practical application of that abstract
idea. Guidance, 84 Fed. Reg. at 54.
Here, as discussed above with regard to Step 2A, Prong 1, claim 1
recites the implied additional elements of a computer (claim 1, preamble)
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and a “linear solver” solving a linear system (claim 1, limitation D).
However, no linear solver is shown in the drawings (see Figs. 1, 4) or
described in detail in the Specifications (see Spec. 9:12–23). Because the
linear solver is described as a “methodology” that “is applied by subgrid or
associated subgrids” (Spec. 9:15), the broadest reasonable interpretation of
the term “linear solver” includes an equation or mathematical process, and
not necessarily a physical element in addition to the abstract idea. And, even
if the linear solver is a computer, it is a general process computing device
like the implied “computer” found in the preamble of claim 1.
Although Appellant contends that claim 1 is not directed to an abstract
idea, but to a technical solution to a technical problem such as improving
network performance or efficiency (see Reply Br. 4), we do not agree that
claim 1 recites any improvement in speed or efficiency to the processor(s) or
device. Instead, the focus of claim 1 is on an improvement in managing
network service resources.
As noted in our discussion of Step 2A, Prong 1 above, any computer
for performing the simulation of a shale reservoir represented by a model,
including the “computer-implemented steps of” limitations A through E
(claim 1) set forth in claim 1 is only used as a tool for performing certain
activities of the recited process (to collect and analyze necessary
information, solve equations, design a well completion plan, and instruct a
machine to drill). The mere recitation of using a computer to perform a
simulation by solving equations, designing a well completion plan, and
instruct a machine to perform drilling in claim 1 (see claim 1, limitations A–
E) does not embody an improvement in computer capabilities as in Enfish.
See 822 F.3d at 1336 (“[T]he plain focus of the claims is on an improvement
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to computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.”).
In the instant case, the additional limitations recited beyond the
judicial exception itself fail to integrate the exception into a practical
application. More particularly, representative claim 1 does not recite: (i) an
improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply
or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular
transformation of an article to a different thing or state (see MPEP
§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See also Guidance, 84 Fed. Reg. at 55.
Rather, the implied additional element of a computer in claim 1
simply recites insignificant extra-solution activity, i.e., determining porosity
information (claim 1, limitation A) and identifying transfer terms (claim 1,
limitation B) to use in solving equations (claim 1, limitation C), which is
merely conventional data gathering (see MPEP § 2106.05(g); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Elec.
Power, 830 F.3d at 1354); and/or insignificant extra-solution activity that
does not meaningfully limit the claim (see MPEP § 2106.05(g)).
And, limitation E adds only insignificant extra-solution activity
because this step in the method merely uses the results of the mental process
(e.g., the well completion plan recited in limitation D) to drill a wellbore as
set forth in limitation E. Therefore, limitation E is insignificant extra-
solution activity that does not meaningfully limit the claim (see MPEP
§ 2106.05(g)), and we consider limitation E to be a step in addition to the
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abstract idea that, considered in light of the claim as a whole, that fail to
integrate the abstract idea into a practical application.
Appellant contends the method of claim 1 is directed to improvements
in a technological field/process (see Appeal Br. 4–8; Reply Br. 3–5), and
that “the claims are directed to an approach to characterize at least three
different porosity types, identify transfer terms between those porosity types,
solve a linear system for the model, design a well completion plan, and drill
a wellbore accordingly” (Reply Br. 6). Therefore Appellant argues claim 1
“recite[s] a practical application that uses the recited model to design and
drill a wellbore” (Reply Br. 6). We disagree.
Although Appellant acknowledges that the claimed solution is useful
to better “predict mass transfer and fluid flow characteristics in reservoirs”
(Appeal Br. 5), these types of improvements to the abstract idea result from
the routine application of computers as tools, not from any technical
innovation. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1367 (Fed. Cir. 2015) (“claiming the improved speed or
efficiency inherent with applying the abstract idea on a computer [does not]
provide a sufficient inventive concept”); Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact
that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”). “[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2359). We do not consider
representative claim 1 to recite any element(s), or ordered combination of
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elements, which transforms the abstract idea to patent eligible subject
matter.
For the reasons discussed above, we conclude Appellant’s claim 1
(and claims 2–21 grouped therewith) invokes generic computer components
(one or more processors) merely as tools in which the computer instructions
apply the judicial exception and, thus, the abstract idea is not integrated into
a practical application. Because Appellant has not persuaded us the
Examiner’s determination that claim 1 recites an abstract idea under Step 2A
is in error, and claim 1 recites a judicial exception (i.e., the abstract idea of a
method of organizing human activity and/or mental process) that is not
integrated into a practical application, in accordance with the Guidance, we
conclude claim 1 and claims 2–21 grouped therewith, are directed to an
abstract idea under Step 2A, and the eligibility analysis with regard to claims
1–21 proceeds to Step 2B.
Step 2B — Inventive Concept
Having determined claim 1 and claims 2–21 grouped therewith are
directed to an abstract idea that is not integrated into a practical application,
we now evaluate whether the additional elements, whether examined alone
or as an ordered combination, add a specific limitation that is not well-
understood, routine, or conventional activity in the field, or simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the abstract idea. See
generally Guidance.
Here, claim 1 impliedly recites the additional elements of a computer
to implement the method (see claim 1, preamble), and a “linear solver” to
solve a linear system (claim 1, limitation D). The computer, impliedly
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recited in the preamble of claim 1, serves merely to gather and analyze data.
And, the linear solver recited in limitation D, as the Examiner finds, “is only
further adding to the analysis of the model” (Ans. 5).
Considering claim 1 as a whole, none of the additional elements
applies or uses the abstract idea in a meaningful way such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.
Notably, no linear solver is shown in the drawings (see Figs. 1, 4).
And, the accompanying description of the linear solver found at page 9, lines
12 through 23 of the Specification describes that the linear solver (i) “is
utilized to solve for any unknown magnitudes of the transfer terms
associated with the nodes” (Spec. 9:12–13); and (ii) “then can be applied to
the linear equations to solve for the unknowns” (Spec. 9:16–17). However,
the linear solver is described to be a “methodology” that “is applied by
subgrid or associated subgrids” (Spec. 9:15), and not a physical element in
addition to the abstract idea.
Appellant contends the Examiner fails to provide the support or
evidence required by claim 1 is “directed to an inventive algorithm that
address[es] a technology-specific need and improves performance of
landline and/or broadband networks” (see Appeal Br. 10) by using a “unique
algorithm” in a “novel and unconventional manner” to “modify[] a remote
resolution protocol” (Appeal Br. 13; see also Appeal Br. 16).
Appellant contends claim 1 recites significantly more than the abstract
idea because the claimed elements improve upon existing reservoir modeling
technology and improves the technological field (see Appeal Br. 4–5), and
recites features that have not been shown to be well-understood, routine, and
conventional with the proper support evidence required by Berkheimer v. HP
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Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018) (see Appeal Br. 5–8). However,
no “elements” are positively recited, only steps in a method. Further,
Appellant’s arguments in this regard are conclusory, and do not specifically
allege what element, if any, is not well-understood, routine, and
conventional.
The Examiner finds, and we agree, that “merely using a linear solver
… is a well-understood, routine, and conventional mathematical method to
solve a problem” (Final Act. 12) (emphasis deleted). This is supported by
Fung’s disclosure of using linear solver techniques for reservoir simulation
(see Fung ¶ 63) with aid of “interporosity transfer terms” (Fung ¶ 100).
Even if we were to consider claim 1 to positively recite a computer
and/or processor (e.g., linear solver) for implementing the method, at least
(i) Figure 1 and the accompanying description found at page 4, lines 15–25;
and (ii) the description of the linear solver in the Specification (see Spec.
9:12–23; see also Fig. 4, step 410), support our determination in this regard.
Appellant’s Specification only shows (see Fig. 1) and describes (see e.g.,
Spec. 4:15–25, 9:12–23) well-understood, routine, conventional computer
components used for performing reservoir simulation that are in a general
purpose computing environment in a manner that indicates the components
and the functions they perform were well-known in the art. See Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(explaining that “a patent need not teach, and preferably omits, what is well
known in the art”); see also USPTO, Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19,
2018), available at
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https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional);
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed.
Cir. 2017) (“The claimed mobile interface is so lacking in implementation
details that it amounts to merely a generic component (software, hardware,
or firmware) that permits the performance of the abstract idea, i.e., to
retrieve the user-specific resources.”).
As a result, we are not persuaded that the computer-implemented steps
recited in claim 1 are anything beyond generic computer functions as
opposed to an improvement to a mental process. Considering the elements
of claim 1 individually and as an ordered combination, claim 1 does no more
than simply instruct the practitioner to implement the abstract idea on a
generic computer and/or processor. Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333–34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible.”).
Furthermore, generically claimed elements of processors and
computers have been found to be no more than well-understood, routine, and
conventional activity in the context of gathering and assembling data. See,
e.g., Berkheimer, 890 F.3d at 1370 (“The conventional limitations of claim
1, combined with limitations of analyzing and comparing data and
reconciling differences between the data . . . amount to no more than
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performing the abstract idea of parsing and comparing data with
conventional computer components”) (emphasis added); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 716 (updating an activity log by computer is
well-understood, routine, conventional activity). As explained by the
Supreme Court, the presence of a generic computer performing generic
computer functions, such as calculation and transmission of data, is not
enough to transform an abstract idea into a patent-eligible invention. Alice
Corp. v. CLS Bank, 573 U.S. 208, 225–226 (2014).
Additionally, as noted in MPEP § 2106.05(d)(II), the courts have
previously recognized that using computer processors and memories to
collect data and keep records and/or perform repetitive calculations are
well‐understood, routine, and conventional functions when they are claimed
in a merely generic manner (e.g., at a high level of generality), or as
insignificant extra-solution activity (see MPEP § 2106.05(d)(II)(i)–(iv)).
See also Berkheimer, 881 F.3d at 1366 (acts of parsing, comparing, storing,
and editing data are abstract ideas); SAP Am., Inc. v. InvestPic, LLC, 898
1161, 1167 (Fed. Cir. 2018) (“[M]erely presenting the results of abstract
processes of collecting and analyzing information . . . is abstract as an
ancillary part of such collection and analysis”); Intellectual Ventures I, 850
F.3d at 1340 (“collecting, displaying, and manipulating data” is an abstract
idea); Smart Sys., 873 F.3d at 1372 (concluding “claims directed to the
collection, storage, and recognition of data are directed to an abstract idea.”).
As a result, Appellant has not persuaded us the Examiner erred with
respect to the Guidance’s Step 2B analysis. See Guidance, 84 Fed. Reg. at
Step 2B.
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Summary
As explained above, under the Guidance, based on the record before
us, and informed by our governing case law concerning 35 U.S.C. § 101,
Appellant has not sufficiently shown the Examiner erred in rejecting
representative claim 1, as well as claims 2–21 grouped therewith, as being
directed to patent-ineligible subject matter without significantly more, and
we sustain the rejection of claims 1–21 under 35 U.S.C. § 101.

Issue (2): Obviousness Under 35 U.S.C. § 103(a)
We have reviewed the Examiner’s obviousness rejections of claims 1–
21 (Final Act. 19–44), and response to Appellant’s arguments in the Appeal
Brief (Ans. 5–10), in light of Appellant’s arguments in the Appeal Brief
(Appeal Br. 8–11) and Reply Brief (Reply Br. 3–5) that the Examiner has
erred. We agree with Appellant’s arguments that the Examiner has erred.
Our reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We give the claim limitations the broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). Based on the plain and ordinary meaning of “three
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different porosity types” as used in limitation A and B of claim 1, and in
remaining independent claim 18, and in light of Appellant’s disclosures in
step 400 of Figure 4 and the body of the Specification (see Spec. 1:13–2:30,
3:9–4:2, 4:30–5:2, 8:13–26) concerning classification and identification of
porosity types into four specific and different categories (natural fracture,
induced fracture, rock matrix, and vug pore systems), and further based on
the explicit recitations in limitations A and B that “at least three different
porosity types” be characterized from among that group of four porosity
types, we cannot agree with the Examiner (see Final Act. 20–21, 37–38;
Ans. 5–7) that Fung teaches or suggests three porosity types as required by
claims 1 and 18. As Appellant contends (see Appeal Br. 8–10; Reply Br. 3–
5), Fung teaches a dual porosity simulation, as is known in the art (see Spec.
1:22–32). One of ordinary skill in the art would understand that Fung deals
only with two porosity types, matrix and natural facture. In this light we are
persuaded by Appellant’s arguments that Fung (i) uses a “dual porosity
approach” based on matrix and natural fracture porosity systems (Appeal Br.
8; see also Appeal Br. 9 (“Fung only characterizes two porosity systems:
matrix and facture systems”)); and (ii) “[t]here is no separate
characterization of induced or natural factures, as claimed” (Appeal Br. 11).
We will not resort to speculation or assumptions to cure the
deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). The Examiner’s speculation that Fung’s three
porosity partitions 1, M, and F at location 1303 (see Ans. 5–7 citing Fung
¶ 141) are indicative of a multi-porosity characterization process is
outweighed by the persuasiveness of Appellant’s more reasonable
contention that “Fung does not describe 1, M, or F as ‘different porosity
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types’ as claimed, nor does he describe 1, M, or F as being ‘selected from
the group consisting of natural fracture pore systems, matrix pore systems,
induced fracture pore systems and vug pore systems’ as claimed” (Reply Br.
3). As a result, the Examiner has not provided a prima facie case of
obviousness on this record, and does not make any determination concerning
whether or not it would have been obvious to one of ordinary skill in the
wellbore drilling and/or reservoir simulation/modeling art to add a third (or
fourth) porosity type, such as induced fracture or vug pore systems, to the
reservoir simulation method of Fung.
With regard to Ortoleva, which at best teaches analyzing two porosity
types, induced fracture and vug pore systems, we agree with Appellant’s
arguments that (i) Ortoleva fails to teach or suggest “separate
characterization of a vug pore system[] and matrix pore system – as
claimed” (Reply Br. 5); and, thus (ii) Ortoleva fails to remedy the
deficiencies of Fung (see Appeal Br. 10–11) because, “[a]lthough Ortoleva
appears to be directed to modeling, [Ortoleva] in no way specifically teaches
separate characterizations of a vug pore system or induced pore system”
(Reply Br. 10).
Based on the record before us, we find that the Examiner has not
sufficiently established factual determinations and articulated reasoning with
a rational underpinning to support the legal conclusion of obviousness for
claims 1 and 18, resulting in a failure to establish a prima facie of
obviousness. As a result, based on the record before us, Appellant has
shown the Examiner erred in rejecting independent claims 1 and 18, and thus
claims 2–21 depending respectively therefrom, under 35 U.S.C. § 103(a),
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and we cannot sustain the Examiner’s obviousness rejections of claims 1–21
over the combination of Fung and Ortoleva.

CONCLUSIONS6
(1) As explained above, under the Guidance, based on the record
before us, and informed by our governing case law concerning 35 U.S.C.
§ 101, Appellant has not shown the Examiner erred in rejecting
representative claim 1, as well as claims 2–21 grouped therewith, as being

6 Although not before us on Appeal, we leave it to the Examiner to evaluate
whether the independent claims are obvious under 35 U.S.C. § 103(a) over
Fung, or Fung and Ortoleva, in combination with another reference that
teaches the identification or characterization of vug pore systems, or
simulating based on tri-porosity or multi-porosity systems.
In addition, in the event of further prosecution of claims 1 and 18,
which recite “drilling a wellbore” (claim 1, limitation E) using a computer
for implementation, the Examiner’s attention is directed to 35 U.S.C. § 112,
first paragraph, for consideration of whether limitation E has written
description support in Appellant’s Specification as originally filed (see e.g.,
Spec. 9:24–10:16; Figs. 1, 4). In the Summary of the Claimed Subject
Matter section of the Corrected Summary for Appeal Brief filed November
29, 2018 (p. 2), Appellant points to page 9, lines 24 through page 10, lines
16 and Figure 4 of the Specification for support for limitation E. However,
no drilling equipment is depicted in the submitted drawings (see Figs. 1–4),
and no drilling step is shown in Figure 4. And, it is not clear how the
computer system 100 including processor 102 shown in Figure 1 and
described at page 4, lines 15 through 25 of the Specification operates to
perform “drilling a wellbore” as recited in claims 1 and 18. One of ordinary
skill in the art would understand the drilling, although possibly controlled by
a computer and maybe with the assistance of operators, to be done by
drilling equipment.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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directed to patent-ineligible subject matter without significantly more, and
we sustain the rejection of claims 1–21 under 35 U.S.C. § 101.
(2) In addition, Appellant has shown the Examiner erred in rejecting
claims 1–21 as being unpatentable under 35 U.S.C. § 103(a). In view of the
foregoing, we do not sustain the obviousness rejections of claims 1–21 as
being obvious over the combination of Fung and Ortoleva.
In summary, we affirm the Examiner’s decision to reject claims 1–21,
because at least one ground of rejection has been affirmed for each claim.
See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim, except as to any ground specifically
reversed”).
In summary, for all of the reasons above, we affirm the Examiner’s
decision to reject claims 1–21, and we hold as follows:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103(a) Fung, Ortoleva 1–21
Overall
Outcome
1–21

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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)(1)(iv). See
37 C.F.R. §§ 41.50(f), 41.52(b) (2013).

AFFIRMED