Ex Parte Busche et al

Patent Trials and Appeals Board

Jan 18, 2017

12973766 - (D) (P.T.A.B. Jan. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/973,766 12/20/2010 Frederick D. Busche CHA920050019US2 2427
45095 7590 01/20/2017
HOFFMAN WARNTOK T T C EXAMINER
540 Broadway
4th Floor
NEGIN, RUSSELL SCOTT
ALBANY, NY 12207 ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
01/20/2017 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK D. BUSCHE, JOHN B. ROLLINS,
HAROLD J. NOYES, and JAMES G. BUSH
Appeal 2015-008057
Application 12/973,766
Technology Center 1600
Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 15—21 (Final
Act.2 2). Examiner entered rejections under 35 U.S.C. § 101 and 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants disclose “a system and method for preparing near-surface
heavy oil for extraction using microbial degradation, as well as an analytical
1 Appellants identify the real party in interest as “International Business
Machines Corporation” (App. Br. 1).
2 Final Office Action entered Dec. 10, 2014.
Appeal 2015-008057
Application 12/973,766
infrastructure to support the extraction process” (Spec. 12). Claims 15 is
representative and reproduced below:
15. A system comprising:
at least one computing device performing a method
comprising:
receiving data including: nutrient data, oil property data,
rock and fluid property data, and data relating to microbial
species residing in an underground, near-surface crude oil
extraction environment;
modeling the received data to facilitate identification of a
preferred microbial species from among the microbial species
residing in the underground, near-surface crude oil extraction
environment, wherein the preferred microbial species is a
microbial species that can transform heavy oil into a lighter oil;
and
employing an algorithm to identify a nutrient from the
underground, near-surface crude oil extraction environment that
is introduced into the underground, near-surface crude oil
extraction environment to promote a proliferation of the
preferred microbial species.
(App. Br. 10 (emphasis added).)
The claims stand rejected as follows:
Claims 15—21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Larter3 and Matlock.4
Claims 15—21 stand rejected under 35 U.S.C. § 101, as directed to
non-statutory subject matter.
3 Larter et al., WO 2005/115649 Al, published Dec. 8, 2005.
4 Matlock et al., US 5,339,254, issued Aug. 16, 1994.
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Application 12/973,766
ISSUE
Obviousness:
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Larter
provides a process for stimulating microbial methane
production in a petroleum-bearing subterranean formation,
comprising:
(a) analyzing one or more components of the formation to
determine characteristics of the formation environment;
(b) detecting the presence of a microbial consortium,
comprising at least one methanogenic microorganism, within
the formation;
(c) assessing whether the formation micr[o]organisms are
currently active;
(d) determining whether the microbial consortium comprises
one or more methanotrophic microorganism',
(e) characterization of one or more microorganisms of the
consortium, at least one of the members of the consortium
being a methanogenic microorganism, and comparing the
members of the consortium with at least one known
microorganism having one or more known physiological and
ecological characteristics;
(f) characterization of one or more methanotrophic
microorganisms of the consortium (if present), and comparing
the members of the consortium with at least one known
microorganism having one or more known physiological and
ecological characteristics;
(g) using information obtained from steps (a) through (e) for
determining an ecological environment that promotes in situ
microbial degradation of petroleum and promotes microbial
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Application 12/973,766
generation of methane by at least one methanogenic
microorganism of the consortium;
(h) using information obtained from steps (a) and (f), if
methanotrophic microorganisms are present, for determining an
ecological environment that demotes in situ microbial
degradation of methane by at least one methanotrophic
microorganism of the consortium; and
(i) modifying the formation environment based on the
determinations of steps (g) and (h), if methanotrophic
microorganisms are present, to stimulate microbial conversion
of petroleums to methane while minimising methane
destruction by adverse processes.
(Larter 6: 18 — 7: 17 (emphasis added); see generally Final Act. 5—6.)
FF 2. Larter’s process
stimulates and sustains the activity of a mixture of different
microorganisms in a petroleum-bearing, subterranean formation
to convert petroleum to methane, which can be produced. It
also reduces the activity of methanotrophic organisms that may
be present, to avoid the degradation of the methane produced
and permits avoidance of processes other than methanogenesis
that may act as alternative electron sinks and thus prevents
methane production. While not wishing to be bound by theory,
it is believed that a mixture of microorganisms converts
petroleums to methane in multiple acts as follows:
(1) Microbial consortia degrade various petroleum compounds
(e.g., saturated and/or aromatic hydrocarbons, asphaltenic,
and nitrogen-sulphur-oxygen bearing organic compounds) into
various compounds, which may include amines, alcohols,
organic acids, and gases.
(2) Methanogens convert various low molecular weight
compounds, which may include amines, alcohols, organic
acids, and gases, into methane, CO2, and water.
(Larter 7: 29 — 8: 14 (emphasis added); cf. Final Act 5—6, citing Larter 22:
10-21, (“Larter [] identifies [] preferred syntrophic microbial species (i.e.
that are suggested to have the ability of degrading heavy oil into lighter oil)
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Application 12/973,766
and Final Act 7, citing Larter 22: 10—21 (Larter discloses “‘[potential
syntrophic organisms that will covert complex organic carbon in petroleum
into substrates that can be converted to methane by methanogens.
Ans. 3.)
FF 3. Examiner finds that Larter “at least suggests an intermediate
substrate that could comprise less complex forms of carbon (e.g. lighter
oil)”) (Final Act. 8).
FF 4. Examiner finds that “Larter [] does not teach the computer and data
warehouse limitations of [Appellants’] claims” and relies on Matlock to
make up for this deficiency in Larter (Final Act. 6).
ANALYSIS
Based on the combination of Larter and Matlock, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious “to modify the crude oil analysis of Larter [] by use of the
computerized analysis of oil of Matlock [] wherein the motivation would
have been that automation of the analysis of oil data yields more efficient
and expedient data analysis” (Final Act. 7). We are not persuaded.
As Appellants explain, Examiner failed to establish an evidentiary
basis on this record to support a conclusion that the combination of Larter
and Matlock suggest a system that comprises, inter alia, modeling data to
facilitate identification of a preferred microbial species that can transform
heavy oil into a lighter oil or promoting the proliferation of the preferred
microbial species, as required by Appellants’ claimed invention (see
generally App. Br. 6—8; Reply Br. 3—4). Specifically, Appellants contend
that “Larter describes the production of methane from carbon dioxide and
molecular hydrogen, which are ‘intermediates’ derived from petroleum
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Application 12/973,766
hydrocarbons” (Reply Br. 3). “As Appellants previously noted and the
Examiner [] emphasizes, these ‘intermediate’ compounds ‘may include
amines, alcohols, organic acids and gases.’ Nothing in [Larter] teaches or
suggests the transformation of a heavy oil into a lighter oil” and Matlock
fails to make up for this deficiency in Larter (Reply Br. 3 (emphasis added);
App. Br. 8). We agree.
On this record, Examiner has, at best, inferred that a microbial species
capable of transforming heavy oil into a lighter oil is present in Larter’s
disclosure, but provides no evidence that this is an inherent or necessary
result (see Final Act. 5—7; Ans. 3). “[Rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
Absent some articulated rationale, a finding that a combination
of prior art would have been “common sense” or “intuitive” is
no different than merely stating the combination “would have
been obvious.” Such a conclusory assertion with no
explanation is inadequate to support a finding that there would
have been a motivation to combine.
In re Van Os, 2017 WL 24642, 2015-1975, at *2 (Fed. Cir. Jan. 3, 2017).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 15—21 under
35 U.S.C. § 103(a) as unpatentable over the combination of Larter and
Matlock is reversed.
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Utility.
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention is directed to non-statutory subject matter?
ANALYSIS
Examiner finds that Appellants’ “claimed invention is directed to non-
statutory subject matter” (Final Act. 2—3, citing Alice Corp. Pty. Ltd. v. CLS
BankInt’l, 134 S. Ct. 2347, 2355 (2014)). Specifically, Examiner finds that
Appellants’ claimed invention is “directed to the abstract idea of modeling
geological data to identify preferred microbial species that degrade oil and to
identity nutrients that cause proliferation of the preferred microbial species”
(id. at 3). According to Examiner, “[t]he additional element(s) or
combination of elements in [Appellants’] claim(s) other than the abstract
idea per se amount[] to no more than: executing the data manipulation
algorithms on a computer system and storing the data on a data warehouse”
(id.). Therefore, Examiner concludes, that when “[vjiewed as a whole, these
additional claim element(s) do not provide meaningful limitation(s) to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amount[] to significantly more than the abstract
idea itself’ (id.; see also Ans. 2 (Appellants’ “claims are obvious in view of
the prior art [relied upon in Examiner’s obviousness rejection and] do not
recite an improvement”). We are not persuaded.
No doubt, Appellants’ claimed system involves the use of a computer
that performs a method involving the manipulation of data (see App. Br. 10).
“[S]imply implementing a mathematical principle on a physical machine,
namely a computer, [is] not a patentable application of that principle.”
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct.
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Application 12/973,766
1289, 1301 (2012). To the contrary, to transform such a nonpatentable
phenomenon, process, or concept into a patent-eligible application, one must
do more than simply state the phenomenon, process, or concept “while
adding the words ‘apply it.’” Id. at 1294.
On this record, however, Appellants’ claimed invention does more
than recite a nonpatentable phenomenon, process, or concept, while simply
stating “apply it” in the context of a machine (see App. Br. 10).5 * * * * * oil
Notwithstanding Examiner’s assertion to the contrary, Appellants’ claims
recite a specific way to automate the identification of nutrients that promote
5 We note that the Application on Appeal is a continuation of Busche et al.,
(US 7,922,893 B2, issued Apr. 12, 2100). Claim 1 of Busche et al., is
reproduced below:
1. A method for enhancing the recovery of heavy oil in an
underground, near-surface crude oil extraction environment,
comprising:
sampling and identifying microbial species (bacteria and/or
fungi) that reside in the underground, near-surface crude oil
extraction environment;
collecting rock and fluid property data from the underground,
near-surface crude oil extraction environment;
collecting nutrient data from the underground, near-surface
crude oil extraction environment;
identifying a preferred microbial species from the underground,
near-surface crude oil extraction environment that can
transform the heavy oil into a lighter oil;
identifying a nutrient from the underground, near-surface crude
oil extraction environment that promotes a proliferation of
the preferred microbial species; and
introducing the nutrient into the underground, near-surface
crude oil extraction environment.
(Busche 8: 35—52.)
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Application 12/973,766
the proliferation of preferred microbial species residing in an underground,
near-surface crude oil extraction environment that are capable of
transforming heavy oil into a lighter oil (id.; see generally Busche 8: 35—52).
See generally, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259 (Fed. Cir. 2014) (The claimed invention “recite[s] a specific way to
automate the creation of a composite web page by an ‘outsource provider’
that incorporates elements from multiple sources in order to solve a problem
faced by websites on the Internet”).
Further, notwithstanding Examiner’s assertion to the contrary,
Examiner failed to establish an evidentiary basis on this record to support a
finding that “the steps [of Appellants’] claimed [invention] (apart from the
natural laws themselves) involve well-understood, routine, conventional
activity previously engaged in by researchers in the field.” See Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289,
1301 (2012).
For the foregoing reasons, we agree with Appellants that Appellants’
“pending claims [are] directed to patent-eligible subject matter under 35
[U.S.C. §] 101” (App. Br. 6; see generally id. at 2—6; Reply Br. 1—3).
CONCLUSION OF LAW
The evidence of record fails to support Examiner’s finding that
Appellants’ claimed invention is directed to non-statutory subject matter.
The rejection of claims 15—21 under 35 U.S.C. § 101, as directed to non-
statutory subject matter is reversed.
REVERSED
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