Ex Parte DiCaprio et al

Patent Trial and Appeal Board

Mar 22, 2019

13701431 (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/701,431 11/30/2012
34477 7590 03/26/2019
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-Nl.4A.607)
Spring, TX 77389
FIRST NAMED INVENTOR
Christopher J. DiCaprio
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2010EM223 6646
EXAMINER
SUGLO, JANET L
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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 CHRISTOPHER J. DICAPRIO,
REBECCA L. SAL TZER, and ANOOP A. MULL UR
Appeal2018-005493
Application 13/701,431
Technology Center 2800
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (ExxonMobile Upstream Research Company) appeals
under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 4--8,
and 12-19. We have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The claims are to a method for estimating lithology of a subsurface
region. Claim 1 is illustrative:
1. A remote, deterministic method for estimating at least
lithology of a subsurface region, comprising:
obtaining at least one type of remote geophysical survey
data representing the subsurface region;
Appeal2018-005493
Application 13/701,431
identifying a plurality of possible lithology classes, each
class being associated with a value of the discrete valued model
parameter, and each class being defined by one or more
deterministic rock physics equations;
developing a model of the subsurface region in terms of
at least lithology, porosity, and water saturation, wherein the
model subdivides the subsurface region into discrete cells in
which the lithology is represented as a value of the discrete
valued model parameter;
using a computer to perform an inversion that inverts the
at least one type of remote geophysical survey data to obtain at
least the lithology, the porosity, and the water saturation of the
subsurface region with the one or more deterministic rock
physics equations that provide a mapping between the at least
one type of remote geophysical survey data and the lithology,
the porosity, and the water saturation of the subsurface region,
wherein the inversion finds a best-fitting value of the
lithology, the porosity, and the water saturation for each cell in
the model by minimizing a misfit between the at least one type
of remote geophysical survey data and simulated data generated
by the computer from the model of the subsurface region; and
drilling a well into the subsurface region based at least
partly on the lithology, the porosity and the water saturation
determined from the inversion.
The Rejections
Claims 1, 4--8, and 12-19 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description and enablement
requirements.
OPINION
We reverse the rejections. We need address only the sole independent
claim, i.e., claim 1.
Written description
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement the applicant's specification must "convey
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Application 13/701,431
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991)).
The Examiner finds that to provide written descriptive support for a
claimed invention, "[t]he steps/procedure taken to perform the function must
be described with sufficient detail so that one of ordinary skill in the art
would understand how the inventor intended the function to be performed"
(Non-final Act. 3--4). 1
As indicated above, that is not the correct test for written descriptive
support.
The Examiner finds that "[ t ]here are no rock physics equations in the
original specification, much less any support in the specification for the
entirety of the limitations that relate to the rock physics equations" (Ans. 4--
5).
The Examiner acknowledges that rock physics equations were well
known in the art (Ans. 6). "The specification need not disclose what is well
known in the art." In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991), citing
Lindermann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1463 (Fed. Cir. 1984). The Appellant's claims do not require
particular rock physics equations. The Specification discloses and the
claims recite use of rock physics equations generally in the claimed method
for estimating at least lithology of a subsurface region (Spec. ,r,r 13, 19).
1 "Non-final Act." herein refers to the non-final action dated January 5,
2017.
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Application 13/701,431
Thus, the Examiner has not established that the Appellant's Specification
fails to convey with reasonable clarity to those skilled in the art that the
inventors were in possession of the claimed method. Accordingly, we
reverse the rejection under the 35 U.S.C. § 112, first paragraph, written
description requirement.
Enablement
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). As stated
by the court in Wright, 999 F.2d at 1561---62:
Nothing more than objective enablement is required, and
therefore it is irrelevant whether this teaching is provided
through broad terminology or illustrative examples. [Citation
omitted.]
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that
the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the
specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in the
specification as to the scope of enablement. If the PTO meets
this burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling. [Citation omitted.]
The Examiner finds that there are many rock physics equations
(Ans. 6) and "[t]here is no description within the specification of the steps of
the process or any equations involved" (Non-final Act. 5), so "[e]ven a
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Application 13/701,431
highly skilled artisan would not have enough guidance to know which rock
physics equations to use without undue experimentation" (Ans. 6-7).
The Examiner's finding that one of ordinary skill in the art could not
have used rock physics equations in the Appellant's method without undue
experimentation merely because there are many rock physics equations is
unsupported by evidence or technical reasoning. The Examiner's mere
assertion is insufficient for establishing a prima facie case of nonenablement.
We therefore reverse the rejection under the 35 U.S.C. § 112, first
paragraph, enablement requirement.
DECISION
The rejections of claims 1, 4--8, and 12-19 under the 35 U.S.C. § 112,
first paragraph, written description and enablement requirements are
reversed.
The Examiner's decision is reversed.
REVERSED
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