Michael FORMOLO et al.

Patent Trials and Appeals Board

Jul 28, 2021

2020005213 (P.T.A.B. Jul. 28, 2021)

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.
15/049,833 02/22/2016 Michael J. FORMOLO 2015EM049 5490
34477 7590 07/28/2021
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
WALL, VINCENT
ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. FORMOLO, MICHAEL LAWSON, and
CARA L. DAVIS

Appeal 2020-005213
Application 15/049,833
Technology Center 2800
Before JEFFREY T. SMITH, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision finally rejecting claims 1–12 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. See Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/049,833 filed Apr. 19, 2018 (“the ’833 App.”); the Final Office Action
dated Nov. 15, 2019 (“Final Act.”); the Appeal Brief filed Apr. 20, 2020
(“Appeal Br.”); the Examiner’s Answer dated May 8, 2020 (“Ans.”); and the
Reply Brief filed July 2, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies ExxonMobil Upstream Research Company as
the real party in interest. Appeal Br. 4.
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We REVERSE.
I. BACKGROUND
The subject matter on appeal relates to the field of geochemistry, more
specifically, to a system and method for a deployable system configured to
measure clumped isotope and position-specific isotope signatures of
hydrocarbons concurrently with other oil field operations. Spec. ¶ 10. The
Applicant defines “isotope” as one of two or more atoms with the same
atomic number but with different numbers of neutrons. Id. ¶ 28.
Hydrocarbon molecules contain both carbon and hydrogen atoms, and may
contain a variety of isotopes. Id. Carbon can be present in the molecule as
one of two stable isotopes: 12C, which has six protons and six neutrons; and,
in much lower concentrations, 13C, which has six protons and seven
neutrons. Id. Hydrogen can be present in a molecule as one of two stable
isotopes: H, which contains one proton but no neutrons; and, in much lower
concentrations, Deuterium (D), which contains one proton and one neutron.
Id.
“Signatures” in the ’833 Application refers to the relative abundances,
concentrations and/or ratios of various elements, isotopes, positions within a
compound and isotopologues of a given species. Id. ¶ 29. “Isotopologue”
refers generally to molecules that have the same chemical composition, but
have a different isotopic signatures. Id. ¶ 30. The Applicant provides the
example of methane, CH4, which contains one atom of carbon and four
atoms of hydrogen. Id. Each atom in the methane structure can contain one
of the two stable isotopes of that atom, and as such there are ten possible
isotopologues of methane. Id. “Multiply substituted isotopologues” refer
generally to isotopologues that contains at least two rare isotopes in its
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structure, such as a multiply substituted methane isotopologue containing
one 13C atom and one D atom, or at least two D atoms in the absence of a
13C atom. Id. ¶ 31. “Clumped isotopologue” refers to an isotopologue that
contains at least two rare isotopes that share a common chemical bond in its
structure, for example, methane with one 13C atom that shares a chemical
bond with at least one D atom. Id. ¶ 32.
As used in the ’833 Application, “position specific isotope signature”
refers to a compound that has multiple chemically or structurally distinct
positions for a rare isotope to reside. Id. ¶ 33. As an example, for propane
(C3H8), a position specific isotope effect could refer to the position of the 13C
atom, which can be positioned either at the center of the compound or one of
the end positions, or the position of the D atom, which can be attached to
either a central or end position carbon. Id.
According to the Applicant, the use of multiply substituted
isotopologue and position specific isotope geochemistry in a field deployed
system may provide concurrent or real-time data for reservoir surveillance,
reducing the time between sampling of the fluids and data analysis of the
multiply substituted isotopologue and position specific isotope geochemistry
compared to conventional practices, and providing enhancements to
operations by providing more unique data about the samples. Id. ¶ 37.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A method for enhancing hydrocarbon production
comprising:
providing a field deployable system in fluid
communication with a subsurface formation, wherein the field
deployable system comprises mass spectrometric
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instrumentation that is in fluid communication with drilling
equipment or attached to pipelines flowing produced fluids, and
wherein the field deployable system is configured to measure a
position specific isotope signature of a hydrocarbon compound,
wherein the position specific isotope signature provides an
indication of a concentration of at least one structurally distinct
isotopologue of the hydrocarbon compound that contains at
least one rare isotope;
providing a mud sampling system in fluid
communication with the subsurface formation;
obtaining a plurality of mud gas samples from the mud
sampling system and analyzing the mud gas samples to
determine whether there the variation in signatures of the mud
gas samples exceeds a predetermined threshold;
when the variation in the signatures of the mud gas
samples exceeds the predetermined threshold, obtaining one or
more hydrocarbon samples from the subsurface formation at a
first time and analyzing each of the hydrocarbon samples with
the field deployable system to determine a baseline position
specific isotope signature, wherein the hydrocarbon sample is a
mud gas sample or a produced gas sample;
when the variation in the signatures of the mud gas
samples exceeds the predetermined threshold, obtaining one or
more hydrocarbon sample from the subsurface formation at a
second time, wherein the second time is after the first time, and
analyzing each of the hydrocarbon samples with the field
deployable system to determine a monitored position specific
isotope signature, wherein the hydrocarbon sample is a mud gas
sample or a produced gas sample;
comparing the monitored position specific isotope
signature with the baseline position specific isotope signature;
hydraulic fracturing of a wellbore in the subsurface
formation or adjusting an injection of gas or liquid into the
subsurface formation based on the comparison; and
producing hydrocarbons from the subsurface.
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II. REJECTION ON APPEAL
The Examiner rejects claims 1–12 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter, specifically, a judicial exception without
significantly more. Final Act. 3.
III. DISCUSSION
1. Grouping of Claims
Appellant argues the pending claims as a group. Appeal Br. 5–9. We
select claim 1, the sole independent claim, as representative. 37 C.F.R.
§ 42.37(c)(1)(iv).
2. The Examiner’s Position
The Examiner finds that claim 1 recites a judicial exception—an
abstract idea—because certain limitations recite a mathematical concept, a
mental process, or both. Final Act. 2–4. The Examiner finds that claim 1’s
recitation of “wherein the position specific isotope signature provides an
indication of a concentration of at least one structurally distinct isotopologue
of the hydrocarbon compound that contains at least one rare isotope” is a
mathematical concept because the distinct isotopologue of the hydrocarbon
can be mathematically determined by measuring the position specific
isotope. Id. at 3. The Examiner finds that “when the variation in the
signatures of the mud gas samples exceeds the predetermined threshold”
(recited twice in claim 1) is a mathematical concept because one would
perform the operation of “variation of mud gas sample signature >
predetermined threshold.” Id. The Examiner finds that the same language is
a mental process because one need only to see if the variation exceeds a
predetermined threshold. Id. at 3–4. Finally, the Examiner finds that
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“comparing the monitored position specific isotope signature with the
baseline position specific isotope signature can be either a mental process of
visually comparing data or a mathematical concept of using equations to
compare data. Id. at 4.
The Examiner finds that the additional elements do not integrate the
judicial exceptions into a practical application, as the additional elements are
used for mere data gathering or to generally link the judicial exceptions to
the field of use of hydraulic fracking. Id. at 6–11. The Examiner finds that
the additional elements are routine, conventional, and well-understood, and
do not amount to more than the judicial exceptions. Id. at 11–15.
The Examiner rejects claim 1 as directed to a judicial exception
without significantly more. Id. at 2. The Examiner finds that dependent
claims 2–12 “merely add details to the algorithm which forms the abstract
idea, contain[] insufficient details, or contain[] generic elements,” thus are
not significantly more than the extended abstract idea. Id. at 15–16.
3. Appellant’s Contentions
Appellant argues, inter alia,
[I]t is not enough to merely identify a patent-ineligible concept
(e.g., a mathematical relationship) in a claim, but rather it must
be determined whether the patent-ineligible concept is what the
claim is ‘directed to’ (i.e., is the claim claiming the mathematical
relationship itself, or is the claim seeking to protect a method or
process in which the mathematical relationship is integrated).
Appeal Br. 7. “This determination requires that ‘the claims [be] considered
in their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.’” Id. (quoting See Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). “[R]eciting an
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abstract ides does not mean that the claims are ‘direct to’ an abstract idea.”
Reply Br. 4.
4. Opinion
Appellant identifies reversible error in the Examiner’s rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cor. 2011).
A. Principles of Law
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 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In determining whether a claim falls within an excepted category,
we are guided by the Supreme Court’s two-step framework, described in
Alice (see id. at 217–18), and Mayo Collaborative Services v. Prometheus
Laboratories, 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.
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
(2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(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.
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Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If a
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. “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. (quoting Mayo, 566 U.S. at
77).
In January 2019, the PTO published revised guidance on the
application of Section 101. Guidance, 84 Fed. Reg. 50. Under the
Guidance, we first look to whether a claim recites (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) (“Guidance Step 2A,
Prong One”), and (2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Guidance
Step 2A, Prong Two”). 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 (“Guidance Step 2B”).

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B. Analysis
Guidance Step 1 – Is the claim to patentable subject
matter?
The subject matter of claim 1 falls within the process statutory
category of patentable subject matter identified by 35 U.S.C. § 101.
Specifically, claim 1 is drawn to a method comprising providing a field
deployable system. Appeal Br. 10 (Claims App.). Thus, claim 1 is to
patentable subject matter.
Guidance Step 2A, Prong One – Judicial Exception
As indicated above, under Guidance Step 2A, Prong One, we consider
whether the claim recites a judicial exception to the statutory categories of
patent-eligible subject matter, including one of the following groupings of
abstract ideas: (1) mathematical concepts, e.g., mathematical relationships,
mathematical formulas or equations, and mathematical calculations; (2)
mental processes, e.g., concepts performed in the human mind, including
observations, evaluations, judgments, and opinions; and (3) certain methods
of organizing human activity. See Guidance, 84 Fed. Reg. at 52.
Claim 1 recites
wherein the position specific isotope signature provides an
indication of a concentration of at least one structurally distinct
isotopologue of the hydrocarbon compound that contains at least
one rare isotope . . . ; when the variation in the signatures of the
mud gas samples exceeds the predetermined threshold . . . ;
comparing the monitored position specific isotope signature with
the baseline position specific isotope signature
Appeal Br. 10 (Claims App.). The Examiner finds these limitations are
mathematical concepts or mental processes. Final Act. 3–4.
The Supreme Court has established that a mathematical concept
without more does not constitute patent-eligible subject matter. See Parker
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v. Flook, 437 U.S. 584, 587–96 (1978) (“Here it is absolutely clear that
respondent’s application contains no claim of patentable invention. . . .
Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Mackay Radio & Tel. Co. v.
Radio Corp. of America, 306 U.S. 86, 94 (1939) (“[A] scientific truth, or the
mathematical expression of it, is not patentable invention. . . .”). “Providing
an indication of a concentration” suggests a mathematical relationship
between isotopologues.
Under the Guidance, “mental processes” are defined as concepts
performed in the human mind, with examples including observations,
evaluations, judgments, and opinions. Guidance, 84 Fed. Reg. at 52.
Limitations in claim 1 that recite predetermining or comparing fall into the
mental processes category, as they require observations and evaluations that
can be done in the human mind or with no more than a generic computer.
“But merely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas.” Elec. Power Grp., LLC,
v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).
Claim 1 thus recites mathematical concepts and mental processes,
which are abstract ideas, which are judicial exceptions.
Guidance Step 2A, Prong Two – Integration into a
Practical Application
Having determined that claim 1 recites the abstract ideas of
mathematical concepts and mental processes, we next look to determine
whether the claim recites “additional elements that integrate the judicial
exception into a practical application.” Guidance, 84 Fed. Reg. at 53–54.
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According to the Guidance, even if a claim recites any one of three
groupings of abstract ideas, the claim is still not “directed to” a judicial
exception (abstract idea), and thus is patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” Id. at 53. Limitations that are indicative of “integration into a
practical application” include: (1) improvements to the functioning of a
computer, or to any other technology or technical field (see MPEP
§ 2106.05(a)); (2) applying the judicial exception with, or by use of, a
particular machine (see id. § 2106.05(b)); (3) effecting a transformation or
reduction of a particular article to a different state or thing (see id.
§ 2106.05(c)); and (4) applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception (see id.
§ 2106.05(e)). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). In
contrast, limitations that are not indicative of “integration into a practical
application” include: (1) adding the words “apply it” (or an equivalent) with
the judicial exception, merely including instructions to implement an
abstract idea on a computer, or merely using a computer as a tool to perform
an abstract idea (see MPEP § 2106.05(f)); (2) adding insignificant extra-
solution activity to the judicial exception (see id. § 2106.05(g); and (3)
generally linking the use of the judicial exception to a particular
technological environment or field of use (see id. § 2106.05(h)). See
Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). The Step 2A Prong Two
analysis excludes consideration of whether a limitation is well-understood,
routine, conventional activity. Guidance, 84 Fed. Reg. at 55.
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In addition to abstract ideas, claim 1 recites, inter alia, the additional
elements of
providing a field deployable system in fluid communication with
a subsurface formation, wherein the field deployable system
comprises mass spectrometric instrumentation that is in fluid
communication with drilling equipment or attached to pipelines
flowing produced fluids, and wherein the field deployable
system is configured to measure a position specific isotope
signature of a hydrocarbon compound; . . .

providing a mud sampling system in fluid communication with
the subsurface formation; . . .

hydraulic fracturing of a wellbore in the subsurface formation
or adjusting an injection of gas or liquid into the subsurface
formation based on the comparison; and

producing hydrocarbons from the subsurface.
Appeal Br. 10 (Claims App.). These additional limitations reflect
improvements to the functioning of a technical field (oil drilling, particularly
hydraulic fracturing) and applying the judicial exception by use of a
particular machine. These limitations integrate the results of collecting and
comparing data into a specific and tangible method that results in the method
“moving from abstract scientific principle to specific application,” and
imposing a meaningful limit on the judicial exception. Classen
Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1068 (Fed. Cir.
2011).
The further analysis of Step 2B is not needed, thus we do not
determine whether claim 1 recites well-understood, routine, or conventional
activity. Guidance, 84 Fed. Reg. at 51.
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In view of our analysis under the steps of the PTO’s Revised
Guidance as updated in October 2019, we conclude that claim 1 is directed
to patent eligible subject matter, and do not sustain the Examiner’s rejection
as maintained against representative claim 1, and, consequently by rule, all
claims on appeal.
IV. CONCLUSION
The Examiner’s decision to reject claims 1–12 is reversed.
More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 101 Eligibility 1–12
REVERSED