Branets, Larisav.et al.

Patent Trials and Appeals Board

May 6, 2020

2019002236 (P.T.A.B. May. 6, 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.
14/868,562 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).
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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:
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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).
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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?
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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);
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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-
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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.
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(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”).
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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:
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[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
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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
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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
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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
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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).

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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.

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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