Branets, Larisav.et al.Download PDFPatent Trials and Appeals BoardMay 6, 202014868562 - (D) (P.T.A.B. May. 6, 2020) Copy Citation 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. 14/868,562 09/29/2015 Larisa V. Branets 2014EM316 7595 34477 7590 05/06/2020 ExxonMobil Upstream Research Company 22777 Springwoods Village Parkway (EMHC-N1.4A.607) Spring, TX 77389 EXAMINER MIKOWSKI, JUSTIN C ART UNIT PAPER NUMBER 2129 NOTIFICATION DATE DELIVERY MODE 05/06/2020 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): 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 LARISA V. BRANETS, XIAOHUI WU, and LINFENG BI ____________ Appeal 2019-002236 Application 14/868,562 Technology Center 2100 ____________ Before ERIC S. FRAHM, LARRY J. HUME, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3, 4, and 6–12, which are all the claims pending and 1 Throughout this Opinion, we refer to the: (1) Non-Final Office Action mailed September 25, 2017 (“Non-Final Act.”); (2) Final Office Action mailed April 4, 2018 (“Final Act.”); (3) Advisory Action mailed June 21, 2018 (“Advisory Act.”); (4) Appeal Brief filed August 27, 2018 (“Appeal Br.”); (5) Examiner’s Answer mailed December 13, 2018 (“Ans.”); and (6) Reply Brief filed January 14, 2019. 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 identifies the real party in interest as Exxon Mobil Upstream Research Company, a wholly owned subsidiary of Exxon Mobil Corporation (Appeal Br. 4). Appeal 2019-002236 Application 14/868,562 2 rejected in the application. Claims 2 and 5 have been canceled (see Appeal Br. 15, Claims Appendix; Final Act. 2). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Introduction The present invention relates generally to the field of hydrocarbon operations, such as prospecting or reservoir management and, more particularly, to reservoir modeling and simulation. Specifically, the disclosure relates to a method for optimal construction of a conceptual three-dimensional (3D) grid that is adapted to a subsurface domain’s discontinuities, where the grid may be used for reservoir simulation studies in reservoir exploration, development or production stages, as well as for representing a geologic model description of a reservoir structure and material properties. More specifically, the grid can carry a model of material properties, such as rock and fluid properties, of a reservoir or can be used for numerical discretization of partial differential equations, such as fluid flow or wave propagation. Spec. ¶ 2. Sole independent claim 1 is exemplary, with bracketed lettering, formatting, and emphases added: 1. A method for generating a model of a material property of a faulted subsurface region for hydrocarbon prospecting or reservoir development, said method comprising: [A] generating, using a computer, a mapping of a model mesh representing physical features of the subsurface region, with faults, to an optimized mesh representing a continuous design space in which all faults are removed, said mapping being designed to minimize deformation in mesh cells, wherein minimizing deformation in the mesh cells comprises: Appeal 2019-002236 Application 14/868,562 3 generating a tessellated mesh dividing the physical domain into cells and recording geometric quality of each cell; designing stitching constraints to stitch together discontinuities at fault boundaries or alternatively stitching discontinuities by node relocation, thereby truncating cells at fault boundaries; and [B] optimizing the mesh representing the continuous design space in an iterative optimization procedure, wherein optimizing comprises computing a global grid quality measure by adding together quality metrics computed on every cell in the mesh, wherein the quality metrics computed on every cell in the mesh are based on combining a shape quality indicator with a size metric, subject to the stitching constraints, and wherein the optimization minimizes degradation in geometric quality from the recorded geometric quality due to the stitching constraints, and wherein all mesh nodes are free to move or all mesh nodes are free to move except mesh nodes associated with the stitching together of discontinuities at fault boundaries, which mesh nodes are relocated to an average position and held fixed there; assigning values of the material property to continuous volumes in the optimized mesh to generate a model of the material property in the design space, and using that to generate a model of the material property in the faulted physical domain; and using the model of the material property in the faulted physical domain for hydrocarbon exploration or hydrocarbon production activities in the subsurface region. Appeal Br. 14, Claims Appendix (emphases, bracketed lettering, and formatting added). Appeal 2019-002236 Application 14/868,562 4 Examiner’s Rejection The Examiner rejected claims 1, 3, 4, and 6–12 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter, without significantly more. Non-Final Act. 5–7; Final Act. 3–6; Ans. 3–20. Appellant’s Contentions With regard to the patent eligibility rejection, Appellant contends that the rejection of claims 1, 3, 4, and 6–12 should be reversed (Appeal Br. 5– 13; Reply Br. 3–7), inter alia, because the claims: (i) are not directed to an abstract idea (see Reply Br. 3–4); (ii) integrate any abstract idea into a practical application (see Reply Br. 4, 6); (iii) improve subsurface modeling technology (see Appeal Br. 10, 12; Reply Br. 6), software technology (see Appeal Br. 7), and computer related technology (see Appeal Br. 12); and (iv) recite a technological improvement, such as to computer modeling in the software arts (see Appeal Br. 10–2; Reply Br. 6). Based on Appellant’s patent eligibility arguments, and because claims 1, 3, 4, and 6–12 contain commensurate limitations, we will primarily discuss claim 1 in our analysis under 35 U.S.C. § 101 for patent-ineligibility. Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 5– 12) and the Reply Brief (Reply Br. 3–7), the following issues are presented on appeal: Has Appellant shown the Examiner erred in rejecting claims 1, 3, 4, and 6–12 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? Appeal 2019-002236 Application 14/868,562 5 ANALYSIS Patent Eligibility under 35 U.S.C. § 101 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner erred in this case. 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). 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); Appeal 2019-002236 Application 14/868,562 6 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. 252 (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 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- Appeal 2019-002236 Application 14/868,562 7 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: (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 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 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). 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. Appeal 2019-002236 Application 14/868,562 8 (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 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”). Appeal 2019-002236 Application 14/868,562 9 Step 1 – Statutory Category 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 this Appeal, representative claim 1 recites “[a] method for generating a model of a material property of a faulted subsurface region for hydrocarbon prospecting or reservoir development” including a series of steps that result in “generating a model of the material property in the faulted physical domain; and using the model of the material property in the faulted physical domain for hydrocarbon exploration or hydrocarbon production activities in the subsurface region” (claim 1). Therefore, claim 1, as a method claim, recites at least one of the enumerated categories (e.g., process) of eligible subject matter in 35 U.S.C. § 101. As a result, as to claim 1, as well as claims 3, 4, and 6–12 depending therefrom, we continue our analysis under Step 2A, Prong 1 of the Guidance to determine whether representative the claims recite (1) a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above); and/or (2) additional elements that integrate the abstract idea into a practical application, and thus, are patent-eligible. Step 2A – Abstract Idea Under the Revised Guidance, abstract ideas include “mathematical concepts,” “certain methods of organizing human activity,” and “mental processes.” Guidance at 52. These “certain methods of human activity” include: Appeal 2019-002236 Application 14/868,562 10 [F]undamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Id. The Examiner determines claims 1, 3, 4, and 6–12 are directed to an abstract idea (see Non-Final Act. 5–7; Final Act. 3–4; Ans. 3–15). Specifically, the Examiner determines claim 1 is “directed to the abstract idea of generating a model mesh, analyzing the model, [and] generating an updated model” (Non-Final Act. 5), which is analogous to the concepts of collecting, analyzing, displaying, and manipulating data found to be abstract and patent ineligible by our reviewing court in Electric Power Grp., LLC v. Alstrom S.A., 830 F.3d 1350 (Fed. Cir. 2016), and in Intellectual Ventures I LLC v. Capital One Financial Corp., Case No. 16-1077 (Fed. Cir., Mar. 7, 2017). However, the Examiner does not sufficiently articulate why the claimed subject matter falls within the subject matter groupings of abstract ideas of mathematical concepts, certain methods of organizing human activity, or mental processes. See 84 Fed. Reg. 52. Therefore, we conclude the Examiner has not sufficiently shown that claim 1 recites a judicial exception within the enumerated groupings of abstracts ideas. Contrary to the Examiner’s determinations, we conclude the claim limitations determined by the Examiner to recite an abstract idea do not Appeal 2019-002236 Application 14/868,562 11 correspond to certain methods of organizing human activity, mental processes, or mathematical concepts. In particular, claim 1 recites the following steps: 1. A method for generating a model of a material property of a faulted subsurface region for hydrocarbon prospecting or reservoir development, said method comprising: [A] generating, using a computer, a mapping of a model mesh . . . compris[ing]: generating a tessellated mesh . . . designing stitching constraints . . . ; and [B] optimizing the mesh representing the continuous design space in an iterative optimization procedure, . . . assigning values . . . to generate a model of the material property in the design space, and using that to generate a model of the material property in the faulted physical domain; and using the model of the material property in the faulted physical domain for hydrocarbon exploration or hydrocarbon production activities in the subsurface region. Appeal Br. 14, Claims Appendix (emphases, bracketed lettering, and formatting added). We disagree with the Examiner’s determination that these activities recite an abstract idea. In the context of the invention, the steps recited in claim 1 describe generating a model of material property in a subsurface region by generating a model mesh mapping with a tessellated mesh, stitching constraints, optimizing the mesh, using a model of the material property generated in design space to generate the model in the faulted physical domain, and then using the faulted physical domain model of the material property to assist with hydrocarbon exploration in the Appeal 2019-002236 Application 14/868,562 12 subsurface region (see claim 1). These steps cannot be practically performed in the human mind, and the process set forth in claim 1 for generating a model of a material property of a faulted subsurface region using a model mesh and optimization thereof, is not a mental process that can practically be performed in the mind or using a pen and paper. See SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303–04 (Fed. Cir. 2019) (“[C]laims . . . directed to . . . using a plurality of network monitors . . . [to] analyze specific types of data on the network” cannot practically be performed in the human mind–“the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims” (id. at 1304).). The instant claims cannot practically be performed in the human mind and, therefore, do not recite a mental process. See USPTO's October 2019 Update: Subject Matter Eligibility,§ II.C.i (available at https://www.uspto.gov/sites/default/ files/documents/ peg_oct_2019 _update.pdf) (“October 2019 Update”) (“Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind.”). More particularly, the human mind cannot optimize the model mesh as set forth in limitation B of claim 1 — such recitations are not a mental process. Similarly, these recitations are also not certain methods of organizing human activity or mathematical concepts as described in our guidance. See 84 Fed. Reg. at 52. Appellant’s argument that “while some of [the] claim limitations may be based on mathematical concepts, the mathematical concepts are Appeal 2019-002236 Application 14/868,562 13 not recited in the claims” (Reply Br. 3), is persuasive. Similarly, Appellant’s arguments (see Reply Br. 3–4) that the claims do not recite a mental process or the organization of human activity are also persuasive. Accordingly, we are persuaded by Appellant’s arguments that (i) the claimed subject matter does not recite an abstract idea (see Appeal Br. 6–7; Reply Br. 3–4); and (ii) “the pending claims go beyond the mere ‘collecting and analyzing’ of data in Electric Power” (see Appeal Br. 8) and in Intellectual Ventures (see Appeal Br. 9), and are thus distinguishable from these two cases (see Appeal Br. 7–9). In this light, Appellant’s contentions that claim 1 is not directed to an abstract idea, but to an improvement in computer modeling-related technology (Appeal Br. 9–10; Reply Br. 2–4), are persuasive. Even if we were to agree with the Examiner that claim 1 recites an abstract idea, the additional elements of the claim (a computer that performs the optimization process of limitation B) integrate the abstract idea into a practical application. See MPEP § 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”). In particular, claim 1 recites a computer for optimizing a model mesh mapping representing a continuous design space in an iterative optimization procedure set forth in limitation B of claim 1 that serves to provide a method for hydrocarbon prospecting or reservoir management that is “more efficient and may be constructed to lessen problems with discontinuities associated with grid optimization techniques” (Spec. ¶ 8). The method recited in claim 1 provides performance benefits by using a geometry-based approach as Appeal 2019-002236 Application 14/868,562 14 opposed to a physics-based approach (see Spec. ¶¶ 21–23; Abstract). The processes recited in Appellant’s claims 1, 3, 4, and 6–12 “provide a geometry-based mapping technique that minimizes deformations and discontinuities in mapping techniques in the computer-related technology of building subsurface models” (Appeal Br. 12). In particular, under Step 2A, Prong 2, we agree with Appellant that such an approach “provide[s] a practical application of any abstract idea contained in the claim[], namely the generation of a model of a material property of a faulted physical domain” (Reply Br. 6), which “is then used for hydrocarbon exploration or hydrocarbon production activities (such as identifying locations of hydrocarbon accumulations or determining where to drill a well)” (Reply Br. 6 citing Spec. ¶¶ 42–45). Therefore, we also agree with Appellant’s contention that “[i]n such a way, the claims provide a specifically claimed method that improves the technology of subsurface modeling” (Reply Br. 6). Moreover, even if arguably the claims were considered to recite an abstract concept, because claim 1 overcomes a problem specifically arising in the realm of hydrocarbon prospecting or reservoir development, under Step 2A, Prong 1 the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computers and software used for hydrocarbon exploration and production activities, and, accordingly, the claims are not directed to an abstract idea. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Appeal 2019-002236 Application 14/868,562 15 Our reviewing court has held that claims which recite rules that allow automation of animation tasks that could only be performed manually were not directed to an abstract idea. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313‒14 (Fed. Cir. 2016); see also MPEP 2106.015(a). Like McRO, the claims here improve an existing technology and are, therefore, not directed to an abstract idea. As a result, we agree with Appellant (see Appeal Br. 9; Reply Br. 5) that McRO is applicable here. Thus, even if claims 1, 3, 4, and 6–12 recite an abstract idea (e.g., mathematics or a mental process), the claims recite additional steps/elements that integrate the judicial exception into a practical application, and are, therefore, directed to patent-eligible subject matter. Accordingly, we conclude, when claims 1, 3, 4, and 6–12 are considered as a whole, any recited judicial exception is integrated into a practical application as determined under either MPEP § 2106.06(a) cited above, such that the claims are patent eligible. Because the present claims (i) do not recite an abstract idea, and (ii) integrate any abstract idea into a practical application, we need not proceed to Step 2B. Rather, our analysis ends here. In view of the foregoing, under the Revised Guidance, and informed by our governing case law concerning 35 U.S.C. § 101, the Examiner erred in concluding claims 1, 3, 4, 6–12 are directed to a judicial exception. Accordingly, we do not sustain the Examiner’s § 101 rejection of independent claim 1, as well as claims 3, 4, and 6–12 depending therefrom. Appeal 2019-002236 Application 14/868,562 16 CONCLUSION We reverse the Examiner’s decision rejecting claims 1, 3, 4, and 6–12 under 35 U.S.C. § 101 as being patent ineligible. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 6–12 101 Eligibility 1, 3, 4, 6–12 REVERSED Copy with citationCopy as parenthetical citation