Ahmed S. Al-Zawawi et al.

Patent Trials and Appeals Board

Oct 31, 2019

14337798 - (D) (P.T.A.B. Oct. 31, 2019)

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.
14/337,798 07/22/2014 Ahmed S. Al-Zawawi 0004159.005252 1022
35979 7590 10/31/2019
Bracewell LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
JONES, HUGH M
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
docketing@bracewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte AHMED S. AL-ZAWAWI, ALI AHMED AL-TAIBAN,
and M. EHTESHAM HAYDER

Appeal 2018-008752
Application 14/337,798
Technology Center 2100
Before JEREMY J. CURCURI, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–13, 15–21, 23, and 24. 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(a). Appellant identifies the real party in interest as Saudi Arabian Oil
Company. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims recite methods for probing hydrocarbon reservoir
simulation models. See Spec., Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system to enhance probing of hydrocarbon reservoir
simulation models, the system comprising:
one or more processors;
one or more databases in communication with the one or
more processors and having data associated with one or more
different hydrocarbon reservoir simulation response surface
model proxies to thereby define surface model proxies stored
therein, the surface model proxies having a common image
format based on a conversion from a plurality of different
simulation model technology formats to the common image
format, each of the surface model proxies being associated with
one of one or more hydrocarbon reservoir simulation models;
one or more input and output units in communication
with the one or more processors and positioned to receive input
and output communication;
a display in communication with the one or more
processors and configured to display an electronic user interface
thereon; and
non-transitory memory medium in communication with
one or more of the one or more processors, the memory
medium having computer-readable instructions stored therein
that when executed cause the one or more processors to perform
the steps of:
initiating a proxy application programming
interface (API), responsive to user request through the
one or more input and output units, to thereby interrogate
one or more of the surface model proxies from the one or
more databases, the proxy API including a plurality of
different preselected operations,
interpreting each of the one or more of the surface
model proxies to thereby retrieve a simulation data set for
each of the one or more of the surface model proxies
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responsive to each of the plurality of different preselected
operations of the proxy API, and
displaying, through the electronic user interface on
the display, for each of the one or more of the surface
model proxies, one or more results of each of the
plurality of different preselected operations of the proxy
API to thereby probe the associated hydrocarbon
reservoir simulation models, wherein the plurality of
different preselected operations of the proxy API include
each of:
determining, responsive to a first preselected
simulation objective, an output value of one or
more of the surface model proxies for a first
preselected set of hydrocarbon reservoir simulation
run parameters with respect to the surface model
proxies to thereby query the one or more of the
surface model proxies;
identifying, responsive to a second
preselected simulation objective, one of the
hydrocarbon reservoir simulation models
associated with one of the surface model proxies
when the one of the surface model proxies has an
output value for a second preselected set of
hydrocarbon reservoir simulation run parameters
with respect to the surface model proxies that is
closest to output values of a preselected simulation
scenario to thereby define a closest model;
identifying, responsive to a third preselected
simulation objective, two of the hydrocarbon
reservoir simulation models each associated with
one of the surface model proxies when one of the
two of the surface model proxies has an output
value for a third preselected set of hydrocarbon
reservoir simulation run parameters with respect to
the surface model proxies that is closest to the
output value of another preselected simulated
scenario among output values higher than the
output value of the other preselected simulated
scenario and when the other of the two of the
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surface model proxies has an output value for the
third preselected set of hydrocarbon reservoir
simulation run parameters that is closest to the
output value of the other preselected simulated
scenario among output values lower than the
output value of the other preselected simulated
scenario, the two hydrocarbon reservoir simulation
models thereby defining close realization
bracketing models; and
identifying names of one or more
hydrocarbon reservoir simulation run parameters
with respect to the surface model proxies
responsive to a fourth preselected simulation
objective to thereby return the identified one or
more hydrocarbon reservoir simulation run
parameters.
REJECTION
Claims 1–5, 7–13, 15–21, 23, and 24 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception. Final Act. 2.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
I. 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.
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 id. 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, 67–68 (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 183 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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. “A claim that recites an
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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 U.S. Patent and Trademark Office (“PTO”) recently published
revised guidance on the application of § 101. See USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under the Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice,
or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
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.
See Guidance, 84 Fed. Reg. at 56.
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II. Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 12 is directed to the abstract idea
of “probing hydrocarbon reservoir simulation models,” which the Examiner
concludes is a mathematical concept. Final Act. 2, 6. For the reasons set
forth below, we agree that claim 1 recites a mathematical concept, which is
an abstract idea.
We determine that claim 1 recites a mathematical concept because
claim 1 broadly relates to interrogating and interpreting mathematical
functions (surface model proxies) and outputting results of different
mathematical operations. Claim 1 recites at least the following
mathematical limitations:
1. A system to enhance probing of hydrocarbon reservoir
simulation models, the system comprising:
. . . .
. . . data associated with one or more different
hydrocarbon reservoir simulation response surface model
proxies to thereby define surface model proxies stored therein,
. . ., each of the surface model proxies being associated with
one of one or more hydrocarbon reservoir simulation models;
. . . .
. . . perform the steps of:
initiating a proxy application programming
interface (API) . . ., to thereby interrogate one or more of
the surface model proxies from the one or more
databases, the proxy API including a plurality of different
preselected operations,
interpreting each of the one or more of the surface
model proxies to thereby retrieve a simulation data set for

2 Appellant argues claims 1–5, 7–13, 15–21, 23, and 24 as a group. See
Appeal Br. 19, 22. We select independent claim 1 as representative of
claims 1–5, 7–13, 15–21, 23, and 24. See 37 C.F.R. § 41.37(c)(1)(iv).
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each of the one or more of the surface model proxies
responsive to each of the plurality of different preselected
operations of the proxy API, and
. . . wherein the plurality of different preselected
operations of the proxy API include each of:
determining, responsive to a first preselected
simulation objective, an output value of one or
more of the surface model proxies for a first
preselected set of hydrocarbon reservoir simulation
run parameters with respect to the surface model
proxies to thereby query the one or more of the
surface model proxies;
identifying, responsive to a second
preselected simulation objective, one of the
hydrocarbon reservoir simulation models
associated with one of the surface model proxies
when the one of the surface model proxies has an
output value for a second preselected set of
hydrocarbon reservoir simulation run parameters
with respect to the surface model proxies that is
closest to output values of a preselected simulation
scenario to thereby define a closest model; [and]
identifying, responsive to a third preselected
simulation objective, two of the hydrocarbon
reservoir simulation models each associated with
one of the surface model proxies when one of the
two of the surface model proxies has an output
value for a third preselected set of hydrocarbon
reservoir simulation run parameters with respect to
the surface model proxies that is closest to the
output value of another preselected simulated
scenario among output values higher than the
output value of the other preselected simulated
scenario and when the other of the two of the
surface model proxies has an output value for the
third preselected set of hydrocarbon reservoir
simulation run parameters that is closest to the
output value of the other preselected simulated
scenario among output values lower than the
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output value of the other preselected simulated
scenario, the two hydrocarbon reservoir simulation
models thereby defining close realization
bracketing models;
identifying names of one or more
hydrocarbon reservoir simulation run parameters
with respect to the surface model proxies
responsive to a fourth preselected simulation
objective to thereby return the identified one or
more hydrocarbon reservoir simulation run
parameters.

As drafted, these limitations, under their broadest reasonable
interpretation, recite a mathematical concept because the limitations recite
mathematical calculations, including at least manipulating mathematical
functions (i.e., proxies) by interrogating and interpreting them, identifying
models associated with mathematical functions (proxies) based on a
mathematical comparison of a function’s output value with a simulation
scenario, identifying models based on a mathematical comparison of the
output value with other values, and identifying mathematical parameters.
See Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“A mathematical formula
as such is not accorded the protection of our patent laws”); Parker v. Flook,
437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical formula]
cannot support a patent unless there is some other inventive concept in its
application.”); Benson, 409 U.S. 63, 71–72 (1994) (concluding that
permitting a patent on the claimed invention “would wholly pre-empt the
mathematical formula and in practical effect would be a patent on the
algorithm itself”); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical
calculations based on selected information” recite abstract ideas).
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The Specification confirms that the claims recite a mathematical
concept. For example, the Specification states, “a proxy may include a
mathematical function” that “may be generated based on the output of a
simulation study.” Id. ¶ 4. The Specification identifies problems with
proxies, including that “various techniques and technologies can be used
during approximations, i.e., to generate each proxy,” and as a result,
“proxies can differ from one another depending, for example, on the
algorithm used to approximate or correlate inputs to and outputs of a
simulation.” Spec. ¶ 5. These simulations “may serve to find one or more
solutions to series of equations that maximize (or minimize . . .) the value of
a mathematical function related to a preselected goal.” Id. 2. Proxies, i.e.,
functions, “may approximate the response of a hydrocarbon reservoir model
for some reservoir model input and a stated objective function.
Consequently, a proxy may correspond to a given hydrocarbon reservoir
simulation model and to an objective function.” Id. ¶ 4. The Specification
further discloses an “API [that] can be used to probe a response function
(proxy) and get the response surface value (i.e., function estimated value)
with certain (i.e., specific) probabilities of the response surface value’s being
accurate.” Id. ¶ 16.
Accordingly, for the aforementioned reasons, we agree with the
Examiner that claim 1 recites a mathematical concept, and thus, an abstract
idea. See Guidance, 84 Fed. Reg. 52.

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III. Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we now must determine if additional elements in
the claims integrate the judicial exception into a practical application
(see MPEP §§ 2106.05(a)–(c), (e)–(h)).
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55
(“Prong 2”). For example, Appellant’s claimed additional elements (e.g.,
processors, databases, image formats, input and output units, display, and
memory) do not: (1) improve the functioning of a computer or other
technology; (2) are not applied with any particular machine (except for a
generic computer); (3) do not effect a transformation of a particular article to
a different state; and (4) are not applied in any 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 MPEP §§
2106.05(a)–(c), (e)–(h). Instead, these limitations merely serve to narrow
the recited abstract idea using a generic computing device, which cannot
impart patent-eligibility. See Spec. ¶¶ 79, 17 (“a system to enhance probing
of hydrocarbon reservoir simulation models . . . can include one or more
processors and one or more databases” and “a display in communication
with the one or more processors”); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716–17 (Fed. Cir. 2014) (determining that a general-purpose
processor that merely executes the judicial exception is not a particular
machine).
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Appellant’s arguments focus on limitations that we determine are part
of the judicial exception as discussed above; thus, these limitations are not
“additional elements” that can impart patent eligibility to the claim. See,
e.g., Appeal Br. 4–5; see also Guidance n. 24 (“USPTO guidance uses the
term ‘additional elements’ to refer to claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.”).
Even assuming these limitations could be considered additional
elements, we are not persuaded the Examiner’s rejection is in error. For
example, Appellant contends the claims are “directed to a problem and an
improvement in computer-related technology and not an abstract idea.”
Appeal Br. 12. Specifically, Appellant contends the claims are directed to
“problems and solutions related to hydrocarbon reservoir simulations and the
use of what is known in the art as a ‘hydrocarbon reservoir simulation
response surface model.’” Id. (citing Spec. ¶¶ 2–4). According to
Appellant, “the use of multiple surface response proxies and the large
amounts of hydrocarbon reservoir simulation data creates specific problems
and challenges in computer-related technology.” Id. at 13. Appellant
contends, the “proxy API” that interrogates proxies “provide[s] various
technological, cost, and efficiency advantages” and “easier development
workflows.” Id. at 13–14.
The Examiner finds, and we agree, that the “‘proxy API’ . . . does not
improve the functioning of the computer or a technology.” Ans. 5. Rather,
it is apparent from the Specification that the API facilitates mathematical
manipulations. As we noted above, the Specification describes the API as
being “used to probe a response function (proxy) and get the response
surface value (i.e., function estimated value) with certain (i.e., specific)
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probabilities of the response surface value’s being accurate.” Id. ¶ 16. The
API pertains to manipulating functions, not improving computer
functionality.
Appellant next contends the claims are analogous to those in McRO,
as the claims recite a “particular solution to a problem.” Appeal Br. 17
(citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016)). Appellant argues that the claim recites “specific operations
[that] define a particular solution and specific way—using output values of
simulation scenarios and preselected simulation objectives—to solve the
problem of multiple surface response proxies and the large amounts of
hydrocarbon reservoir simulation data.” Id. at 18.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit
found that the claimed rules allow computers to produce accurate and
realistic lip synchronization and facial expressions in animated characters
that previously could only be produced by human animators, and the rules
were limiting because they define morph weight sets as a function of
phoneme sub-sequences. Id. at 1313.
We find no evidence of record here to support the argument that the
present situation is like the one in McRO, where computers were unable to
make certain subjective determinations, i.e., regarding morph weight and
phoneme timings, which could only be made prior to the claimed invention
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by human animators. Although probing functions for hydrocarbon reservoir
simulations may improve a mathematical result, it does not achieve an
improved technological result.
Appellant also contends the present claims “prevent preemption of all
processes for achieving the desired result.” Appeal Br. 18 (internal
quotation omitted). We do not find Appellant’s argument persuasive.
Claims that are otherwise directed to patent-ineligible subject matter cannot
be saved by arguing the absence of complete preemption. Return Mail, Inc.
v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Accordingly, we determine that claim 1 does not integrate the judicial
exception into a practical application and, therefore, is directed to the recited
abstract idea (e.g., mathematical concepts).

IV. Step 2B (Inventive Concept)
Because we find that the claims are directed to an abstract idea, we
next consider whether the claims include additional limitations, such that the
claims amount to significantly more than the abstract idea.
The Examiner finds, and we agree, that the additional elements are
well-understood, routine, and conventional in the field. Final Act. 8.
Specifically, the Examiner finds,
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These are recited as performing generic computer
functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract
idea with a computerized system. . . .
Claim 1 additionally recites the limitations of user
interface. The element is recited at a high level of generality
and its broadest reasonable interpretation comprises only the
function of the limitation through the use of some unspecified
generic computer and interface. The use of generic computer
components to carry out said functions through an unspecified
interface does not impose any meaningful limit on the computer
implementation of the abstract idea.

Id.
Appellant contends that the claims represent a “non-conventional and
non-generic arrangement” as in Bascom. Appeal Br. 20 (citing BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Specifically, Appellant contends the claims recite “‘preselected
operations’ of the proxy API that, in addition to other claim elements, are a
‘non-conventional and non-generic arrangement.” Id. Appellant asserts,
“[t]his technology-based solution enables interrogation of multiple surface
model proxies having different approaches or technologies and provides
improved analysis of hydrocarbon reservoir simulation models associated
with such proxies.” Id. at 21. But interrogating multiple functions is simply
performing multiple mathematical calculations.
Appellant also asserts that the claims “recite elements unknown in the
art.” Appeal Br. 20. Novelty and non-obviousness, however, are
insufficient to convey eligibility. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor
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Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(same for obviousness) (Symantec). The claims here are ineligible because
their innovation is an innovation in ineligible subject matter. No matter how
much of an advance in the hydrocarbon reservoir simulation field the claims
recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm. An
advance of that nature is ineligible for patenting.
As we explained above, the additional limitations merely narrow the
recited abstract ideas using generic computer components. Accordingly, we
find that there are no additional limitations that cause the claims to amount
to significantly more than the abstract idea. See, e.g., Spec. ¶¶ 17, 79. Thus,
we determine no element or combination of elements recited in claim 1
contains any “inventive concept” or adds anything “significantly more” to
transform the abstract concept into a patent-eligible application.
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not
recite significantly more than the abstract idea to which the claim is directed,
we sustain the Examiner’s rejection of claims 1–5, 7–13, 15–21, 23, and 24,
which Appellant argues as a group, under 35 U.S.C. § 101 as being directed
to non-statutory subject matter in light of Alice, its progeny, and the
Guidance. See supra n.3.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
1–5, 7–13, 15–
21, 23, 24
101 1–5, 7–13,
15–21, 23, 24

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