Dingding Chen et al.Download PDFPatent Trials and Appeals BoardApr 2, 20212020003245 (P.T.A.B. Apr. 2, 2021) 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. 14/404,328 11/26/2014 Dingding Chen 2011-IP-051568 U1 US 3415 15604 7590 04/02/2021 Baker Botts L.L.P. 910 Louisiana Street, One Shell Plaza Houston, TX 77002 EXAMINER ANDERSON, LYNNE D ART UNIT PAPER NUMBER 2862 NOTIFICATION DATE DELIVERY MODE 04/02/2021 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): debie.hernandez@bakerbotts.com susan.stewart@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DINGDING CHEN, MARK A. PROETT, LI GAO, and CHRISTOPHER MICHAEL JONES Appeal 2020-003245 Application 14/404,328 Technology Center 2800 Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and BRIAN D. RANGE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. Appeal 2020-003245 Application 14/404,328 2 DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–26. See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellant states the invention relates to improved systematic inversion methodology applied to formation testing data interpretation with spherical, radial, and/or cylindrical flow models. Spec. 4, ll. 25–27. Claim 1, reproduced below, is illustrative of the claimed subject matter (Appeal Br., Claims Appendix 27): 1. A method of determining a parameter of a formation of interest at a desired location comprising: directing a formation tester to the desired location in the formation of interest; obtaining data from the desired location in the formation of interest, wherein the obtained data relates to a first parameter at the desired location of the formation of interest; initializing an estimation of a second parameter at the desired location in the formation of interest to simulate the first parameter by using a selected flow model; 1 This Decision includes citations to the following documents: Specification filed November 26, 2014 (“Spec.”); Final Office Action mailed June 7, 2019 (“Final Act.”); Appeal Brief filed October 25, 2019 (“Appeal Br.”); Examiner’s Answer mailed February 10, 2020 (“Ans.”), and Reply Brief filed March 30, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Halliburton Energy Services, Inc. Appeal Br. 2. Appeal 2020-003245 Application 14/404,328 3 calculating a curve misfit based, at least in part, on the obtained data and simulated first parameter; inverting the obtained data to update the second parameter, wherein inverting the obtained data comprises using a method selected from a group consisting of a deterministic approach, a probabilistic approach, and an evolutionary approach; optimizing a curve match of the obtained data and the simulated first parameter, wherein optimizing the curve match comprises calculating a partial derivative of the curve misfit of the first parameter with respect to the second parameter of the selected flow model in deterministic and probabilistic approaches; and optimizing one or more aspects of performance of one or more operations of the formation tester within a predetermined time based, at least in part, on one or more parameters of the optimized curve match. Claims 9 and 16 are also independent and recite an information handling system and a method of estimating a desired parameter of a formation of interest, respectively. Appeal Br., Claims Appendix 28–30. REJECTION Claims 1–26 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a mathematical concept without significantly more. Final Act. 2–8. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). Appeal 2020-003245 Application 14/404,328 4 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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 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. 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))). 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 187; 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 Appeal 2020-003245 Application 14/404,328 5 said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (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. (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. Appeal 2020-003245 Application 14/404,328 6 In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).4 Under MPEP § 2106, 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 One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).5 MPEP § 2106.04(a), (d). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical 3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. 4 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. 5 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” MPEP § 2106.04(d)(II). Appeal 2020-003245 Application 14/404,328 7 application,6 do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional activity” in the field; 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.7 MPEP § 2106.05(d). DISCUSSION The Examiner’s Rejection In rejecting claim 1, the Examiner determined the claims are directed to a mathematical concept without significantly more. Final Act. 2–7. By way of example, the Examiner highlighted the portion of claim 1 that corresponds to the abstract idea as reproduced below: initializing an estimation of a second parameter at the desired location in the formation of interest to simulate the first parameter by using a selected flow model; calculating a curve misfit based, at least in part, on the obtained data and simulated first parameter; inverting the obtained data to update the second parameter, wherein inverting the obtained data comprises using a method 6 This corresponds to Alice part one where it is determined whether the claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not directed to an abstract idea under step one of the Alice analysis, we do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). 7 This corresponds to Alice part two where it is determined whether the claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. Appeal 2020-003245 Application 14/404,328 8 selected from a group consisting of a deterministic approach, a probabilistic approach, and an evolutionary approach; optimizing a curve match of the obtained data and the simulated first parameter, wherein optimizing the curve match comprises calculating a partial derivative of the curve misfit of the first parameter with respect to the second parameter of the selected flow model in deterministic and probabilistic approaches. Final Act. 2–3; Ans. 5–6. The Examiner determined the judicial exception is not integrated into a practical application because directing a formation tester to a desired location and obtaining data therefrom can be considered data gathering, which is extra-solution activity. Id. at 3. In addition, the Examiner determined the step of “optimizing one or more aspects of performance of one or more operations of the formation tester” is optimizing unspecified parameters in an unspecific manner, which “appears to be just applying the exception.” Id. The Examiner determined the “formation of interest” is a field of use or technical environment. Id. The Examiner determined the claim does not recite additional elements that amount to significantly more than the judicial exception for similar reasons. Id. The Examiner determined also that a “formation tester” is considered to be well-known, routine, and conventional. Id. at 4, citing Goodwin et al. US 2007/0119244 A1; May 31, 2007 (“Goodwin”) ¶ 25; Ayan et al. US 2005/0119911 A1 (“Ayan”) Abs., ¶ 102; and Proett et. al. US 2003/0094040 A1; May 22, 2003 (“Proett”) ¶¶ 24, 25. Appellant’s Arguments Appellant argues, inter alia, the claims are eligible because they improve a technology, namely, the technology of determining properties of a subsurface formation based on the results of a logging operation. Appeal Br. Appeal 2020-003245 Application 14/404,328 9 7–9. Appellant contends that the Examiner has improperly characterized the claimed invention as an abstract idea of a “mathematical concept.” Id. at 10–11. Appellant contends that additional limitations including “optimizing a curve match” and “optimizing one or more aspects of performance of one or more operations of the formation tester” provide additional elements beyond the identified abstract idea. Id. at 11–12. Appellant contends the claim elements improve a technical field, because: the claim elements reduce the computation time required of a computer system and provide an ‘improved systematic inversion methodology applied to formation testing data interpretation which spherical, radial and/or cylindrical flow models. With the disclosed methodology, faster inversion algorithms may be developed based on deterministic, probabilistic and evolutionary principles.’ Id. at 12, citing Spec. 4, ll. 25–28. ANALYSIS We confine the bulk of our discussion to independent claim 1, and address independent claims 9 and 16 to the extent necessary below, as the Examiner’s rejection and Appellant’s arguments with respect thereto are similar. See Final Act. 4–8; Appeal Br. 16–24. Claim 1 For the reasons discussed below, we are persuaded the Examiner erred in determining the claimed subject matter to be patent-ineligible as directed to a judicial exception without reciting significantly more. Initially, we find under Step 1 of the Guidance, that claim 1 is directed to a process (a method) including “directing a formation tester to the desired location in the formation of interest,” “obtaining data from the desired location in the formation of interest,” “initializing an estimation,” Appeal 2020-003245 Application 14/404,328 10 “calculating a curve misfit,” “inverting the obtained data,” “optimizing a curve match,” and “optimizing one or more aspects of performance of one or more operations of the formation tester within a predetermined time based, at least in part, on one or more parameters of the optimized curve match.” Accordingly, claim 1 falls within one of the four statutory categories of invention. Therefore, we turn next to Step 2A(1) of the Revised Guidance. The Judicial Exception Under Step 2A(1) we find that claim 1 recites a judicial exception in the form of a mathematical concept. At least the recitations in claim 1 of “calculating a curve misfit based, at least in part, on the obtained data and simulated first parameter” and “wherein optimizing a curve match comprises calculating a partial derivative of the curve misfit of the first parameter with respect to the second parameter of the selected flow model” are mathematical concepts. See Spec. 5, ll. 10–27; 8, l. 15– 9, l. 20; 10, ll. 19– 20. As the October 2019 Update makes clear, “mathematical concepts” are not limited to formulas or equations, and specifically include “mathematical calculations.” October 2019 Update 3–4, see also App’x 1, 21 (Ex. 45). Thus, we agree with the Examiner that claim 1 recites a mathematical concept. See Ans. 5–6. However, the mere fact that the claim recites a mathematical concept does not automatically render the claim patent- ineligible. As a result, we now turn to Step 2A(2) of the Revised Guidance to determine whether the claims integrate the judicial exception into a practical application. Appeal 2020-003245 Application 14/404,328 11 Integration into a Practical Application In Step 2A(2) of the Revised Guidance, we evaluate whether there are additional elements recited in the claim that integrate the mental process into a practical application. In this case, claim 1 recites “obtaining data from the desired location in the formation of interest” and “optimizing one or more aspects of performance of one or more operations of the formation tester, based, at least in part, on one or more parameters of the optimized curve match.” Although each of the “obtaining” and “optimizing” steps analyzed individually may be viewed as mere pre- or post-solution activity, claim 1 as a whole is directed to a particular improvement in the determination of parameters in a formation of interest. In particular, as argued by Appellant, the method provides a specific improvement over prior methods for analyzing formation tester data over prior linear regression methods. Spec. 1, l. 29 – 2, l. 3. The method “is directed to improved systematic inversion methodology applied to formation testing data.” Id. at 4, ll. 25–26. The method provides advantages for optimizing analysis of subterranean characteristics using only measurement data during a predetermined time period. Id. at 13, l. 30 – 14, l. 4. In this regard, as the October 2019 Update makes clear, the claim does not have to recite the improvement described in the specification. October 29 Update 12. Thus, the method in claim 1 improves a technology or technical field. 2019 Revised Guidance 55. Although the Examiner states that “there is no improvement to a technical field as the field of subterranean logging formation technology remains unchanged” (Ans. 10), in view of the portions of the Specification as discussed, we are of the view that the preponderance of the evidence supports Appellant’s position. Appeal 2020-003245 Application 14/404,328 12 For these reasons, claim 1 integrates the judicial exception into a practical application. Thus, we determine claim 1 is eligible, because it is not directed to the judicial exception. As a result, we reverse the Examiner’s rejection of claim 1. Claims 9 and 16 Claims 9 and 16 are also independent, and as discussed above, recite an information handling system and a method of estimating a desired parameter of a formation of interest, respectively. Appeal Br., Claims Appendix 28–30. Both claims 9 and 16 additionally recite similar “obtaining,” 8 “calculating,” and “optimizing” limitations as discussed above for claim 1. Id. Thus, for similar reasons as discussed above with respect to claim 1, we determine claims 9 and 16 recite patent-eligible subject matter, because they are not directed to the judicial exception. As a result, we reverse the Examiner’s rejection of claims 9 and 16. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–26 101 Eligibility 1–26 REVERSED 8 Claim 16 recites “measuring a first parameter of the formation of interest, by a formation tester.” Appeal Br., Claims Appendix 30. Copy with citationCopy as parenthetical citation