Ex Parte Huang

Patent Trial and Appeal Board

Feb 9, 2016

11495149 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111495,149 07/28/2006
59977 7590 02/11/2016
OSHA, LIANG LLP I SMITH
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Sujian J. Huang
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.
05516/078006 1947
EXAMINER
MOLL, NITHYA JANAKIRAMAN
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
02/11/2016 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):
docketing@oshaliang.com
bergman@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUJIAN J. HUANG 1
Appeal2014-000127
Application 11/495,149
Technology Center 2100
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Smith International,
Inc. (which Appellant asserts is "now wholly owned by Schlumberger").
(Br. 3.)
Appeal2014-000127
Application 11/495,149
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1---6 and 8-21. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part and issue a new ground of rejection pursuant to our
authority under the provisions of 3 7 C.F .R. § 41. 50(b ).
Introduction
The claims are directed to methods for selecting bits and drilling tool
assemblies. (See Abst.)
Exemplary Claims
Claims 1 and 6, reproduced below with disputed limitations italicized,
are exemplary of the claimed subject matter:
1. A method for selecting a drill bit, the method comprising:
selecting a first drill bit design;
simulating the first drill bit design drilling an earth formation
under selected conditions;
graphically displaying at least a portion of the simulating,
wherein at least a portion of a resultant graphical
display comprises a display of a path of the first drill bit;
analyzing results of the simulating, wherein the analyzing
comprises reviewing a steerability of the first bit design;
selecting a second drill bit design;
simulating the second drill bit design drilling an earth formation
under selected conditions;
graphically displaying at least a portion of the simulating,
wherein at least a portion of a resultant graphical
2 Claim 7 was canceled in an amendment mailed January 8, 2010.
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display comprises a display of a path of the second drill
bit '
analyzing results of the simulating, wherein the analyzing
comprises reviewing a steerability of the second bit
design; and
selecting, based upon the analyzing, a bit design.
6. A method of selecting a drill bit, comprising:
simulating a first bit design;
assigning a first steerability factor to the first bit design,
wherein the assigning comprises reviewing at least one of
lateral vibration data, lateral force data, walk rate, and a
force imbalance for the drill bit and assigning a relative
value to the drill bit design based on the simulating;
simulating a second bit design, wherein the simulating of the
second bit design comprises graphically displaying a
path of the first bit design and the second bit design;
assigning a second steerability factor to the second bit design;
and
selecting a bit design based on the first and second steerability
factor.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Al ft US 6,389,360 Bl May 14, 2002
Gardner US 2004/0085988 Al May 6, 2004
M.J. Fear, N.C. Meany, and J.M. Evans, An Expert System for Drill
Bit Selection, IADC/SPE 27470 (Feb. 1994) (hereinafter "Fear").
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Application 11/495,149
M.W. Helmy, F. Khalaf~ and T.A. Darwish, Well Design Using a
Computer Model, paper SPE 37709, SPE Drilling & Completion 42-
46 (March 1998) (hereinafter "Helmy").
H. Fiksdal, N. Hydro, C. Rayton, H. Christensen, and Z. Djerfi,
Application of Rotary Steerable System I PDC Bits in Hard
Interbedded Formations: A Multidisciplinary Team Approach to
Performance Improvement, IADC/SPE 59110 (2000) (hereinafter
"Fiksdal").
S. Menand, H. Sellami, C. Simon, A. Besson, and N. Da Silva, How
Bit Profile and Gauges Affect Well Trajectory, paper SPE 82412, SPE
Drilling & Completion, 34--41 (March 2003) (hereinafter "Menand").
S. Menand, H. Sellami, and C. Simon, Classification of PDC bits
According to their Steerability, SPE/IADC 79795 (2003) (hereinafter
"Menand 2").
REJECTIONS
Claims 1-5 and 12-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Menand, Alfi, and Fear. (Final Act. 3-10.)
Claims 6, 8, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Menand, Fear, Menand 2, and Alfi. (Final Act. 10-13.)
Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Menand and Alfi. (Final Act. 13-14.)
Claims 10 and 18-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fiksdal, Menand, and Alfi. (Final Act. 14--16.)
ISSUES
(1) Whether the Examiner erred in finding the combination of
Menand, Alfi, and Fear teaches or suggests "graphically displaying at least a
portion of the simulating, wherein at least a portion of a resultant graphical
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display comprises a display of a path of the first drill bit" and "analyzing
results of the simulating, wherein the analyzing comprises reviewing a
steerability of the first bit design," as recited in claim 1.
(2) Whether the Examiner erred in finding the combination of
Menand, Alfi, and Fear teaches or suggests "selecting a drill bit that has an
improved rate of penetration during a building section of a wellbore," as
recited in claim 13.
(3) Whether the Examiner erred in finding the combination of
Menand, Alfi, Fear, and Gardner teaches or suggests "wherein the graphical
display is four dimensional," as recited in claim 15.
( 4) Whether the Examiner erred in finding the combination of
Menand, Alft, Fear, and Helmy teaches or suggests "comparing a build
angle of the first drill bit to a build angle of the second drill bit," as recited in
claim 16.
( 5) Whether the Examiner erred in finding the combination of
Menand, Fear, Menand 2, and Alfi teaches or suggests "wherein the
simulating of the second bit design comprises graphically displaying a path
of the first bit design and the second bit design," as recited in claim 6.
( 6) Whether the Examiner erred in finding the combination of
Menand and Alfi teaches or suggests "performing a drilling simulation of a
drilling tool assembly, including a selected bit design, to simulate a drilling
operation under selected conditions, wherein the simulation comprises
graphically displaying a path of the selected bit design," as recited in claim
9.
(7) Whether the Examiner erred in finding the combination of
Menand, Alfi, and Fiksdal teaches or suggests "adjusting a location of at
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least one component in the drilling tool assembly to create an adjusted
drilling tool assembly," as recited in claim 10.
(8) Whether the Examiner erred in finding the combination of
Menand, Alfi, and Fiksdal teaches or suggests "wherein the drilling tool
assembly comprises: at least one section of drill pipe," as recited in claim
18.
ANALYSIS
I. Claims 1-5, 9-16, and 18-21
We have reviewed the Examiner's rejections in light of the Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
conclusions and we adopt as our own: ( 1) the findings and reasons set forth
by the Examiner in the Office Action from which this appeal is taken (Final
Act. 3-9 and 13-16) and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellant's Appeal Brief. (Ans. 3-9.)
We concur with the conclusions reached by the Examiner as to those claims,
and we highlight the following for emphasis. 3
A. Claims 1-5, 12, and 14
The Examiner relies on a combination of Menand, Alfi, and Fear as
teaching or suggesting the limitations of claim 1. With regard the disputed
"graphically displaying" limitations,4 the Examiner finds "Menand teaches a
3 Only those arguments made by Appellant have been considered in this
decision. Arguments that Appellant did not make in the brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
4 Claim 1 recites two steps for "graphically displaying at least a portion of
the simulating," with one step referencing "a display path of the first drill
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method for evaluating bit designs. However, Menand does not teach
graphically displaying the path of a drill bit. Alft does teach this in the form
of a bore path, in an intended bore plan, or model." (Final Act. 4 (citing
Alft, col. 5, 11. 57-65, Figs. 24, 27).)
Appellant challenges the Examiner's finding by arguing "Alfi does
not actually display a result of a simulation; rather, Alfi displays a bore as
defined by the drilling plan. Alfi does not take into consideration the
dynamics of the drilling tool assembly and/or bit design." (Br. 7.)
As the Examiner correctly points out, however, claim 1 recites that "at
least a portion ofa resultant graphical display comprises a display ofa path
ofthe first drill bit." (Ans. 3.) The Examiner finds Alfi teaches a "graphical
representation of a bore plan including a bore plan path established using an
automated bore plan development approach." (Ans. 3 (citing Alft, Fig. 24).)
As the Examiner also finds, Alfi further discloses:
The bore plan data is presented in textual and/or graphical form
on the display as data representative of an intended bore defined
along the intended bore path. For example, the bore plan data
may be presented in graphical form on the display as data
representative of the intended bore defined along the intended
bore path and with respect to the representative topography at
the bore site.
(Alfi, col. 5, 11. 59---65) (emphasis added).) We agree the Examiner's findings
are supported by the teachings of the Alfi reference.
bit," and a second step referencing "a display of a path of the second drill
bit." The Examiner has expressly stated findings for both limitations. (Final
Act. 5-6.) Although Appellant expressly addresses only the first such
limitation recited in claim 1 (Br. 7), we consider Appellant's arguments to
apply to both limitations.
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Appellant further argues the Examiner's reliance on Alfi is misplaced
because "Alft is non-analogous art to the present application." (Br. 8.) A
reference must be from an analogous art to be available for use in a section
103(a) rejection. "Whether a reference in the prior art is 'analogous' is a
fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir.
1987)). Two criteria have evolved for answering the question: "(1) whether
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." Id. at 658-59 (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032,
1036 (CCPA 1979)).
We begin by identifying Appellant's field of endeavor. To do so, we
must consider the "explanations of the invention's subject matter in the
patent application, including the embodiments, function, and structure of the
claimed invention." In re Bibio, 381F.3d1320, 1325 (Fed. Cir. 2004)
(citing In re Wood, 599 F .2d 1032, 1036 (CCP A 1979); In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986)). Appellant attempts to narrowly define the
field of endeavor of the present invention to "drilling oil and gas wells":
The entirety of the Appellants' s [sic] [S ]pecification is directed
toward methods and apparatuses for use in drilling oil and gas
wells. In the final office action, the Examiner states that the
claims do not require such a limitation. However, Appellant
asserts that this is an overly broad interpretation, as the
Specification makes clear that the bits and components recited
in the claims are not for generically drilling, but instead are for
drilling oil and gas wells.
(Br. 9 (emphases added).) We disagree with Appellant's overly narrow view
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of the relevant field of endeavor. As the Examiner correctly finds,
Appellant's claims are not limited to drilling for oil and gas wells. (Ans. 5
("[N]o mention of oil and gas recovery is mentioned in the claim
language.").) Rather, as the Examiner further correctly finds, the field of
endeavor of the claimed invention is "directional drilling in earth
formations." (Id.) We further agree with the Examiner's finding "[t]he Alfi
invention is directed towards automated bore planning and directional
drilling into a topographical formation." (Id. (citing Alft Title and
Abstract).) We thus agree with the Examiner's finding "[t]he prior art and
the claim language all fall under the same field of endeavor of directional
drilling in earth formations." (Id.)
With regard to the additional challenged limitations in claim 1 (the
"analyzing" steps), Appellant argues "Alfi, Menand, and Fear simply fail to
disclose reviewing the steerability of both a first and second bit design as
recited in the claims." (Br. 10.) Other than the bare assertion the cited
combination of references fails to disclose the recited limitation, however,
Appellant does not address the Examiner's findings, e.g., explain why the
teachings of the prior art, as cited by the Examiner, fail to teach or suggest
the claimed limitation. Appellant has, therefore, not rebutted the Examiner's
findings as to those limitations. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.") Moreover, we agree the Examiner's
findings regarding these disputed limitations are supported by the cited
reference. (Final Act. 5---6 (citing Menand p. 37 and Fig. 5).)
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For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combined teachings of the cited references render claim 1
obvious under 35 U.S.C. § 103(a). We, therefore, sustain that rejection,
along with the rejection of claims 2-5, 12, and 14, which Appellant argues
collectively with claim 1. (Br. 10.)
B. Claim 13
Claim 13 depends from claim 1, and further defines the "selecting"
step as "selecting a drill bit that has an improved rate of penetration during a
building section of a wellbore." (Br. 23) The Examiner finds this limitation
is taught by the combination of Menand, Alft, and Fear, and cites Figure 1 of
Fear in particular, which purports to disclose an "Interpretation of Bit
Response from Foot-based Data." (Final Act. 8)
Appellant contends claim 13 requires "a bit is selected on the basis of
a rate of penetration for a certain time period (namely when drilling a
deviated section)." (Br. 11 (emphases added).) From this premise,
Appellant argues "Fear, on the other hand, simply lists a table of overall
rates of penetration for three given drill bits. Fear never even discloses
drilling a deviated section of a wellbore, and so cannot be said to fairly teach
the limitations of claim 13." (Br. 11 (emphasis added).)
Appellant's focus on alleged deficiencies in the individual teachings
of Fear does not address the entirety of the Examiner's rejection, which is
based on the combination ofMenand, Alfi, and Fear, and hence is
unpersuasive of error. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). In
ignoring the cited combination of references, Appellant does not, for
example, acknowledge the Examiner's findings regarding Alfi's teaching
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"an actual boring operation." (See, e.g., Final Act. 7 (discussing rejection of
claim 3, which recites "using the drill bit to drill a well") (citing Alft, col. 1,
11. 12-15).) Further, we agree the Fear reference supports the Examiner's
findings regarding using "improved rate of penetration" as a criterion for
selecting a drill bit with regard to specific geological drilling conditions.
(Final Act. 8 (citing Fear, Fig. 1).) In particular, Fear discloses "[a]
systematic approach to bit selection, which identifies how a bit is expected
to perform based on its design characteristics and predicted geological and
drilling conditions . ... " (Fear, p. 359 (emphasis added).) Fear further
discloses "[t]he output would be a generic description of a suitable bit for the
interval to be drilled .... " (Fear, p. 361 (emphasis added).)
In short, we are unpersuaded of error in the Examiner's finding the
combination of Menand, Alft, and Fear teaches or suggests the limitations of
claim 13. We, therefore, sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 13.
C. Claim 15
Claim 15 depends from claim 1, and adds the limitation "wherein the
graphical display is four dimensional." The Examiner rejects claim 15 over
the combination of Menand, Alft, Fear, and Gardner, and relies on Gardner
in particular as teaching a "four dimensional graphical display." (Final Act.
8 (citing Gardner i-f 6).)
Appellant argues "[t]he Examiner relies on Gardner as evidence of
disclosing a graphical display of simulating a drill bit. Gardner, however,
relates to seismic imaging, and fails to disclose anything related to
producing a graphical display of a simulated path of a drill bit, as recited in
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claim 15." (Br. 12-13 (emphasis added).) Appellant's argument
mischaracterizes the Examiner's rejection, in which the Examiner relies on
Gardner only for teaching "a four dimensional graphical display" (Final Act.
8.), and relies on the combination of Menand, Alfi, and Fear for teaching
graphical display of paths of simulated drill bits, as discussed supra. We
agree Gardner teaches four-dimensional imaging (that is, images spanning
three-dimensional space as well as the fourth dimension of time). (Gardner
i-f 6 "Having multiple three-dimensional seismic representations of
conditions below the surface over time is typically referred to as four-
dimensional ( 4D) seismic imaging.")
In focusing on alleged deficiencies in only the Gardner reference,
Appellant otherwise does not address the substance of the Examiner's cited
combination of references (that is, Gardner combined with Menand, Alfi,
and Fear), is unpersuasive of Examiner error. See In re Keller, 642 F.2d at
425. Instead, Appellant asserts, in conclusory fashion without reference to
anything other than caselaw, that "the Examiner, using the present
application as a guide, has selected isolated features of the various relied-
upon references to arrive at the limitations of the claimed invention." (Br.
11-12.) We disagree that the Examiner has engaged in improper hindsight
reconstruction or has erred in combining the teachings of the cited
references. To the contrary, the Examiner has provided an articulated reason
for combining the cited references that includes a rational underpinning.
(See Final Act. 8.) Appellant has not provided persuasive evidence or line of
reasoning explaining why such rationale is erroneous or why a person of
ordinary skill in the art would not have reached the conclusions reached by
the Examiner. See DyStar Textilfarben GmbH & Co. Deutschland KG v.
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CH. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.").
For the foregoing reasons, we are unpersuaded of error in the
Examiner's finding the combination of Menand, Alfi, Fear, and Gardner
teaches or suggests the limitations of claim 15. We, therefore, sustain the
Examiner's 35 U.S.C. § 103(a) rejection of claim 15.
D. Claim 16
Claim 16 depends from claim 1, and further defines "the analyzing" as
comprising "comparing a build angle of the first drill bit to a build angle of
the second drill bit." (Br. 23.) The Examiner rejects claim 16 over the
combination of Menand, Alfi, Fear, and Helmy, citing Helmy in particular as
disclosing "build angles I dogleg severity." (Final Act. 9 (citing Helmy
Table 1) (comparing designs based on "Maximum dogleg").) As the
Examiner correctly notes, "'build angle"' is referenced in the Specification
as referring to "'dogleg severity."' (Spec. i-f 86 ("The extent of the build
angle may also be referred to as the 'dogleg severity."').)
Appellant challenges this rejection by arguing against only the
Examiner's findings regarding Helmy. Specifically, Appellant contends:
"Helmy is directed towards creating a well design (i.e., creating a proposed
well plan), not towards analyzing the performance of various drill bits.
When referring to reducing the dogleg severity, Helmy is referring to
designing a well path to minimize the turns required to reach a production
zone." (Br. 14.)
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Again, however, Appellant's focus on alleged deficiencies in the
individual teachings of Helmy does not address the entirety of the
Examiner's rejection, which is based on the combination of Menand, Alft,
Fear, and Helmy, and hence is unpersuasive of error. See Keller at 425.
Appellant's only acknowledgement of the additional references cited by the
Examiner in rejecting claim 16 is the conclusory statement "Alft, Menand,
and Fear, also fail to disclose" the limitation of claim 16. (Br. 14.) This
conclusory contention is also unpersuasive of Examiner error. We,
therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 16.
E. Claims 9 and 11
Independent claim 9 states, in applicable part, "performing a drilling
simulation of a drilling tool assembly, including a selected bit design, to
simulate a drilling operation under selected conditions, wherein the
simulation comprises graphically displaying a path of the selected bit
design." (Br. 22. (emphasis added).)
Appellant argues, "Claim 9 ... includes the entire drilling tool
assembly in the simulation. Neither Alft nor Menand disclose simulating the
performance of a drilling tool assembly." (Br. 16 (emphasis added).) The
Examiner responds "Menand clearly discusses the simulation of an entire
drilling tool assembly, called a bottomhole assembly ('BHA'), referenced in
the Introduction and throughout the entire document." (Ans. 7 (citing
Menand p. 39).) In particular, Menand discloses the impact that a drill bit
may have on the behavior of an entire drilling assembly:
Many directional systems can be used to drill and control the
deviation of these more complex wells. Depending on well
characteristics, one can select a rotary bottomhole assembly
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(BHA), a steerable mud motor, or, more recently, a rotary
steerable system (RSS). Whatever the system used, the drill bit
has an influence on the system's directional behavior.
(Menand p. 34 (emphases added).) We agree with the Examiner's findings,
and further note this is consistent with the scope of claim 9, which recites
simulation of a "drilling tool assembly" with express reference only to "a
selected bit design . ... " (Br. 22. (emphasis added).)
For the foregoing reasons, we are not persuaded of Examiner error in
the 35 U.S.C. § 103(a) rejection of claim 9, and we, therefore, sustain that
rejection along with the rejection of claim 11, which Appellant argues
collectively with claim 9.
F. Claim 10
Claim 10 depends from claim 9, and adds the limitation, inter alia,
"adjusting a location of at least one component in the drilling tool assembly
to create an adjusted drilling tool assembly." (Br. 22.)
Appellant argues "this claim looks at the effect of moving a
component in the drilling tool assembly on the steerability of a bit. As noted
above, neither Menand nor Alfi takes into consideration the effect of other
components on bit performance. The Examiner cites to Fiksdal to show that
adjusting a BHA is known." (Br. 16.)
The Examiner responds "[t]he Examiner is not using hindsight
construction in using Fiksdal. Fiksdal is shown to adjust the location of a
component in the drilling assembly in the page 6 section entitled 'BHA
Configuration'. Various BHA configurations are used to reduce rates of
failure." (Ans. 8 (citing Fiksdal, p. 6).) Specifically, Fiksdal discloses:
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The simulations and results from the field were the basis for the
composition of the final BHA [bottomhole assembly]. The
stabilizer size and distance between them was set up in order to
minimize equipment wear, and reduce the rate of failures in
electrical components, caused by vibrations. . . . The purpose
of adding the Thruster into the BHA was to reduce vibrations ..
. . The output of the Thruster was adjusted by changing bit
nozzles (total flow area) and mudflow.
(Fiksdal, p. 6, (emphasis added).) We agree the Examiner's findings are
supported by the teachings of the Fiksdal reference.
We, therefore, are unpersuaded of Examiner error, and we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of claim 10.
G. Claims 18-21
With regard to claims 18-21, Appellant's assertions amount to no
more than the bare assertion the cited combination of references fails to
disclose the recited limitations, coupled with the conclusory remark that "no
motivation to combine the references has been offered by the Examiner."
(Br. 18.) In making these conclusory assertions, Appellant does not address
the Examiner's findings, e.g., explain why the teachings of the prior art, as
cited by the Examiner, fail to teach or suggest the claimed limitation.
Appellant has, therefore, not rebutted the Examiner's findings as to those
limitations. See In re Lovin, 652 F.3d at 1357. Moreover, Appellant is
incorrect in contending the Examiner has failed to state a motivation to
combine. (See Final Act. 14--15 ("Therefore, it would have been obvious to
one having ordinary skill in the art to combine the adjustment of Fiksdal,
with the simulation and evaluation of a drill bit of Menand in view of Alfi,
motivated by the desire to 'improve drilling performance in the reservoir
section' (Fiksdal: Abstract).") We further agree the Examiner's findings are
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supported by the teachings of the cited references. (Final Act. 15-16, citing
Fiksdal, Figs. 3a-3b and p. 6; Menand p. 36, Table 3, and Fig. 7.)
We, therefore, are unpersuaded of Examiner error, and we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of claims 18-21.
II. Claims 6, 8, and 17
Independent claim 6 recites, inter alia: "simulating a second bit
design, wherein the simulating of the second bit design comprises
graphically displaying a path of the first bit design and the second bit
design." (Claims App.)
Appellant argues "[t]here is no showing or suggestion in Alfi of
comparing two paths of two different bit designs." (Br. 15.) Appellant
further argues:
In claim 6, therefore, two paths are graphically displayed, the
path of a second drill bit as compared with the path of a first
drill bit. In other \vords, the predicted path of a second drill bit
may be compared as the simulation progresses with the path of
the first drill bit design simulated. It appears that the Examiner
has simply failed to acknowledge this limitation.
(Id. (emphases added).) The Examiner responds:
As the limitation does not specifY that the two bit designs are
displayed concurrently, a broad reasonable interpretation would
include the two paths being displayed one after the other.
Therefore, the limitation is taught by the obvious combination
of Menand' s simulation with the graphical display of the bore
path of Alft for two different bit designs.
(Ans. 7 (emphases added).)
We find Appellant's argument persuasive. In reading claim 6 as
encompassing display of two different simulated bit paths "one after the
other," the Examiner is ignoring the part of the disputed limitation that
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requires "the simulating of the second bit design comprises graphically
displaying a path of the first bit design and the second bit design." (Br. 21.
(emphasis added).) Regardless of whether the two paths are required to be
displayed simultaneously or may be displayed in sequence, the Examiner
makes no finding that the prior art teaches or suggests simulating a second
bit design by displaying a path of a first bit design in addition to displaying a
path of the second bit design. Rather, according to the Examiner's findings
on the record, the most that could be said is that the teachings of the cited
references could be used for two different simulations, one after the other.
But, in that case, the graphical display of the second bit design would,
according to the findings of record, be only of the path of the second bit
design. The Examiner has made no findings that the cited prior art teaches
or suggests simulating the second bit design by also displaying a path of the
first bit design, as recited in claim 6. We are thus persuaded the Examiner
has failed to present a prima facie case of unpatentability in the rejection of
independent claim 6 over the cited prior art.
We are, therefore, we are constrained by the record to reverse the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 6 as well as
dependent claims 8 and 1 7.
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NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b): independent claims 1, 6, and 9, and claims 8 and 17 (which
depend from claim 6) are rejected under 35 U.S.C. § 101.
Section 101 of the Patent Act permits the patenting of "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 3 5 U.S. C. § 101. Yet, despite this broad
language, the Supreme Court has "long held that this provision contains an
important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014)(intemal citations omitted).
The Supreme Court has set forth a two-part test "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
134 S. Ct. at 2355. The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
For example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and, mathematical formulas or relationships. Id. at 2355-57.
If the claims are directed to a patent-ineligible concept, the second
step is to consider the elements of the claims "individually and 'as an
ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1297-98 (2012)). In other words, the second step is to "search for
an 'inventive concept' -i.e., an element or combination of elements that is
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'sutlicient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (brackets in original)
(quoting Mayo, 132 S. Ct. at 1294). But a claim reciting an abstract idea
does not become eligible "merely by adding the words 'apply it."' Bancorp
Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1276
(Fed. Cir. 2012).
Applying the first step of the analysis, we find claim 1 is directed to a
patent-ineligible concept-i.e., evaluating choices for a drill bit and
choosing among those choices, which can be performed mentally. Such a
concept is similar to other concepts the Federal Circuit has identified as
abstract, such as "[a] method for guiding the selection of a therapeutic
treatment regimen," comprising comparing new and stored information and
using rules to identify options, in SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 Fed. App'x 950, 951 (Fed. Cir. 2014). We recognize the
method recited in claim 1 is limited to selecting "a drill bit." Limiting the
method to a particular technological environment (i.e., drill bits), however,
does not change a patent-ineligible concept into an inventive one. See Bilski
v. Kappas, 561 U.S. 593, 610 (2010) ("[T]he prohibition against patenting
abstract ideas cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment .... "(citation and
internal quotation marks omitted)).
Because we find claim 1 to be directed to an abstract idea, we must
determine whether the claim as a whole-including all elements or
combination of elements-is directed to significantly more than the abstract
idea itself, i.e., to a patent-eligible application of the abstract idea. See Alice,
134 S. Ct. at 2355. In that regard, the Federal Circuit has recognized that,
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while the "machine-or-transformation" test is not the sole test governing
section 101 analyses, as set forth in Bilski, that test can provide a "useful
clue" in the second step of the Alice framework. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 2907
(2015). In that regard, a claimed process can be patent-eligible under
section 101 if "(1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing." Id. (citing In re
Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff'd on other grounds, Bilski v.
Kappas, 561 U.S. 593 (2010)).
Claim 1 is directed to a method "for selecting a drill bit," and recites,
inter alia, steps of "selecting" a first drill bit design, "simulating" that
design, "analyzing" the simulation results, and then repeating those steps for
a second drill bit design, concluding with the step of ultimately "selecting" a
design. The "selecting" and "analyzing" steps of claim 1 are all steps that
may be performed entirely in the human mind. As such, they do not render
claim 1 patent eligible. See Cybersource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371 (Fed. Cir. 2011) ("[M]ethods which can be performed
mentally, or which are the equivalent of human mental work, are
unpatentable abstract ideas-the 'basic tools of scientific and technological
work' that are open to all."')(citing Gottschalkv. Benson, 409 U.S. 63
(1972)).
The "simulating" steps of claim 1 also do not aid the patentability of
claim 1, as they employ mathematical algorithms to manipulate existing
information (e.g., "bit design parameters" and "well bore parameters") to
generate additional information, and are not tied to a specific structure or
machine. See Digitech Image Techs., LLC v. Electronics for Imaging, Inc.,
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758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.") In
particular, Appellant's Specification describes the various parameters that
are defined and input as data as part of the simulation. (See Spec. i-fi-1 55---61,
72-75.) The Specification further describes defining "well bore parameters"
in terms of various features such as length, diameter, etc., and notes "[w]ell
bore parameters defined in this manner can then be used to mathematically
produce a model of the entire well bore trajectory." (Spec. i160 (emphasis
added).) The Specification further states " [ o ]nee the parameters of the
system (drilling tool assembly under drilling conditions) are defined, they
can be used along with various interaction models to simulate the dynamic
response of the drilling tool assembly drilling earth formation .... " (Spec.
i1 61 (emphases added).) Thus, as confirmed by Appellant's Specification,
the "simulating" steps of claim 1 apply simulated input signals to a model
and determine output signals generated in response. These steps thus simply
involve mathematically manipulating information to generate additional
information, which are not patent-eligible steps.
The only elements of claim 1 that are not purely mental or algorithmic
steps are the steps reciting "graphically displaying at least a portion of the
simulating." We find, however, that these limitations do not ensure that the
claim amounts to significantly more than the patent-ineligible concept. No
particular manner of graphical display is recited in claim 1, but assuming the
graphical display is a computer display (as suggested by the Specification at,
e.g., Fig. 18), this limitation requires no more than a display device
performing its basic function. We, therefore, find Appellant's method as
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recited in claim 1 is neither "tied to a particular machine or apparatus" nor
transforms "a particular article into a different state or thing." Bilski, 545
F.3d at 954. A method is not tied to a particular machine merely because the
machine is involved in an insignificant extra-solution activity. Id. at 962.
Rather, the additional elements of "graphically displaying" results of the
simulation are well-understood, routine, and conventional limitations that
add nothing that is not already present when the elements are taken
individually. See DietGoal Innovs. LLC v. Bravo Media LLC, 33 F. Supp.
3d 271, 287 (S.D.N.Y. 2014) (holding using "conventional computer tasks"
comprising "manipulating data based on inputs from the user, making
computations from stored data, and displaying the results on a visual
display" to implement an abstract idea does not involve the requisite
"'inventive concept'" necessary to limit the scope of a claim to a patent-
eligible application), ajf'd 599 Fed. Appx. 956 (Fed. Cir. 2015).
Based on the foregoing, we conclude claim 1 does not amount to
significantly more than the recited abstract idea, and is not patent eligible.
Turning to the other independent claims, we find independent claim 6
("method of selecting a drill bit") is directed to a similar patent-ineligible
concept as claim 1, and also recites similar limitations to claim 1 (i.e.,
"simulating" a bit design and "selecting" a bit design). Our analysis as to
similar steps in claim 1 also applies to claim 6. Claim 6 recites additional
limitations of "assigning" steerability factors to the bit designs, "wherein the
assigning comprises reviewing at least one of ... "followed by a listing of
different types of data. We find these "assigning" limitations involve steps
that may be performed entirely in the human mind, and, as such, these steps
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do not aid the patentability of claim 6. We, therefore, find claim 6 is not
patent eligible.
We further find dependent claims 8 and 17, which depend from claim
6, do not add anything to render their scope significantly more than the
patent-ineligible concept recited in independent claim 6. Claim 8 only
further describes the data to be graphically displayed as "at least one of
lateral vibration, axial vibration, torsional vibration, force on a component,
rate of penetration, torque, weight on bit, and path of the drill bit," and thus
falls under our analysis of claims 1 and 6, supra. Claim 17 only further
defines the "steerability factor" "in terms of qualitative and quantitative
data," which merely narrows the type of data being analyzed, and thus also
does not add anything to render the claim any less abstract.
We similarly find independent claim 9 is directed to a patent-
ineligible abstract idea of "predicting steerability of a selected bit design,"
which may be performed entirely mentally. The method of claim 9
otherwise comprises similar steps as recited in claim I-namely,
"performing a drilling simulation ... ," "graphically displaying a path of the
selected bit design," and "outputting data representative of the steerability of
the bit design." Like the similar steps of claim 1 that we have analyzed
above, the "simulation" step of claim 9 involves either purely mental steps
or employs mathematical algorithms to manipulate existing information, and
is not tied to a specific structure or machine. The "graphically displaying"
and "outputting data" steps also do not amount to a patent-eligible
application of the abstract idea, but rather are well-understood, routine and
conventional limitations that add nothing that is not already present when the
elements are taken individually. Therefore, applying similar analysis as we
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have applied for claim 1, we find independent claim 9 is also not patent
eligible.
With regard to dependent claims 2-5, 10-16, and 18-21, we note that
we are primarily a reviewing body, rather than a place of initial examination.
The fact that we did not enter new grounds of rejection for the claims that
depend from claims 1, 6, and 9 should not be construed to mean that we
consider those claims to be patentable or directed to patent-eligible subject
matter. Rather, we leave it to the Examiner to make that determination
should further prosecution occur in this case.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejections
of claims 1-5, 9-16, and 18-21 are affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 6, 8, and 17 is
reversed.
We enter a NEW GROUND OF REJECTION of claims 1, 6, 8, 9, and
17 under 35 U.S.C. § 101 pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Section 41.50(b) of 37 C.F.R. provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
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by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
26