Dingding Chen et al.

Patent Trials and Appeals Board

Apr 2, 2021

2020003245 (P.T.A.B. Apr. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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.
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Application 14/404,328
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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.
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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).
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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. 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
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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.
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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).
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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.
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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.
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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,”
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“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.

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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.
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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.