Ex Parte Hull et al

Patent Trial and Appeal Board

Dec 14, 2017

13710689 (P.T.A.B. Dec. 14, 2017)

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.
13/710,689 12/11/2012 Robert M. HULL 7523.1370US01 1606
27683 7590 12/18/2017
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
THOMPSON, KENNETH L
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. HULL, SUNG HYUN KIM,
DARRIN S. SEULAKHAN, and MICHAEL L. BOOTHE
Appeal 2017-007833
Application 13/710,689
Technology Center 3600
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1—9 and 11—25. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 “The real party in interest is Landmark Graphics Corporation.” (Appeal
Br. 2.)
Appeal 2017-007833
Application 13/710,689
STATEMENT OF THE CASE
The Appellants’ “various embodiments of the invention” are
described as a “workflow” to analyze hydrocarbon production assets and to
provide “recommendations” to a client “regarding what actions should be
taken.” (Spec. 18, 19.)
Illustrative Claim
1. A computer-implemented method comprising:
gathering, by a computer system from a database via a
network, data about a group of wells within a
hydrocarbon producing field;
identifying conditions affecting hydrocarbon production
for each well in the group of wells, based on the
gathered data;
determining at least one corrective action to be
performed for each well in the group of wells,
based on the conditions identified for that well;
creating an initial prioritization of the group of wells
based on the corrective action determined for each
well of the group of wells;
creating a secondary prioritization of the group of wells
based on one or more predetermined criteria of a
client and the initial prioritization of the group of
wells;
selecting at least one well from the group of wells for
which the corresponding corrective action is to be
performed, based on the secondary prioritization of
the group of wells;
determining an availability of a service providing entity
to perform the corrective action for the selected
well; and
providing, via the network to a computing device of the
client, a recommendation regarding the corrective
action to be performed for the selected well, based
on the service providing entity's availability.
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Rejections
I. The Examiner rejects claims 1—9 and 11—24 under 35 U.S.C.
§ 102(b) as anticipated by Kosmala.2 (Answer 3.)
II. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Kosmala. (Answer 7.)
ANALYSIS
Claims 1 and 15 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2—9, 11—14, and 16—24) depending
therefrom. (See Appeal Br., Claims App.) Independent claim 1 recites “[a]
computer implemented method” comprising data gathering and data
analyzing steps that culminate in “providing, via [a] network to a computing
device of [a] client, a recommendation regarding the corrective action to be
performed for [a] selected well.” (Id.) Independent claim 15 recites a
“processor” that is caused to perform these data gathering and data analyzing
functions to, likewise, provide a client with “a recommendation regarding
the corrective action to be performed for [a] selected well.” (Id.)
Rejections I and II
As indicated above, independent claim 1 recites data-analyzing steps
and these steps include “creating an initial prioritization of [a] group of wells
based on [a] corrective action determined for each well of the group of
wells.” (Appeal Br., Claims App.) Independent claim 15 recites a similar
limitation regarding an “initial prioritization” based on the “corrective
action” determined for each well. (Id.) The Examiner finds that Kosmala
discloses a computer-implemented method in which such an initial
2 US 2007/0175633 Al, published August 2, 2007.
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Application 13/710,689
prioritization is created when it color codes a field of wells. (Answer 3.)
Kosmala describes this color coding as follows:
CPU 46 may be programmed to provide a color-coded guide as
to which wells are performing well, performing poorly, or
require future intervention. In one application, wells are
identified by dots 148 that are illuminated on field map 146 in
green for “no issue,” red for “well down,” and yellow for
potential problems requiring further analysis. When a potential
problem or operational concern (yellow alarm) arises, the system
identifies the symptom, the probable cause or causes, and
suggests a corrective action or actions. The operator can then
enter appropriate commands via control system 28 which are sent
over network 38 to specific pumping systems 24 to adjust
controllable devices 82 for optimization of pumping system
operation.
(Kosmala 144, bolding of reference numerals omitted.) The Examiner
explains that, in Kosmala, the “initial prioritization” is considered to be the
categorization of certain wells as “red” and “yellow,” and also the exclusion
of “green” wells having no issues. (See Answer 4, emphasis omitted.)
The Appellants argue that Kosmala does not disclose the “initial
prioritization” required by the claims on appeal. (See Reply Br. 3—5.) We
are persuaded by this argument because independent claims 1 and 15 require
the initial prioritization to be “based on the corrective action determined for
each well.” (Appeal Br., Claims App., emphasis added.) In Kosmala, a
corrective action is suggested when the “yellow” alarm arises or, in other
words, after the problematic well has been color coded “yellow.” (See
Kosmala 144.) As such, in Kosmala, the initial prioritization (i.e., color
coding) cannot be based on a “corrective action,” as a “corrective action” is
suggested “only after this prioritization has occurred.” (Reply Br. 5.)
“Therefore, the alleged prioritization in Kosmala cannot be ‘based on the
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Application 13/710,689
corrective action determined for each well in the group of wells, ’ as recited
in the claims.” (Id.)
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 15 under 35 U.S.C. § 102(b) as anticipated by Kosmala. The
Examiner’s further findings with respect to the dependent claims (see
Answer 6—8) do not compensate for the above-discussed shortcoming in
Kosmala’s disclosure. Thus, we also do not sustain the Examiner’s rejection
of dependent claims 2—9, 11—14, and 16—24 under 35 U.S.C. § 102(b) as
anticipated by Kosmala; and we also do not sustain the Examiner’s rejection
of dependent claim 25 under 35 U.S.C. § 103(a) as unpatentable over
Kosmala.
New Rejection III
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection: we reject claims 1—9 and 11—25 under
35 U.S.C. § 101 as reciting only non-statutory subject matter.
The Supreme Court has held that a claim falls outside § 101 where (1)
it is “directed to” a patent-ineligible concept, i.e., a law of nature, natural
phenomenon, or abstract idea, and (2) the particular elements of the claim,
considered “both individually and ‘as an ordered combination,”’ do not add
enough to “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355
(2014) (internal citation omitted). When we apply this Alice two-step test to
the claims on appeal, they do not pass muster under 35 U.S.C. § 101.
As for the first step of the Alice test, the claims in this case fall into
the information-based category of abstract ideas. Collecting information,
including when limited to particular content (which does not change its
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Application 13/710,689
character as information), is within the realm of abstract ideas.3 In a similar
vein, the information-analyzing steps people go through in their minds, or
with the aid of mathematical algorithms, fall within the abstract-idea
category.4 And merely presenting the result of collecting and analyzing
information is abstract as an ancillary part of such collection and analysis.5
Here, the focus of the claims on appeal is on gathering data of a
specified content (i.e., relating to hydrocarbon-producing wells); analyzing
this data (i.e., identifying well conditions, determining corrective actions,
iteratively prioritizing wells, selecting a well for servicing, determining well­
servicing logistics, etc.); and then providing the outcome of this analysis in
the form of a recommendation about a corrective action that would be for a
certain well. (See Appeal Br., Claims App.) As stated in the Specification:
3 See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1349 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech
Image Techs., LLCv. Flees, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011).
4 See, e.g., TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016); Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App’x 950, 955 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v
Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319,
1333 (Fed. Cir. 2010); see also Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1301 (2012); Parker v. Flook, 437 U.S. 584,
589—90 (1978); Gottschalkv. Benson, 409 U.S. 63, 67 (1972).
5 See, e.g., Content Extraction, 116 F.3d at 1347; Ultramercial, Inc. v. Hulu,
LLC, 111 F.3d 709, 715 (Fed. Cir. 2014).
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The various embodiments [of the invention] are directed to a
new and novel workflow used to analyze mature hydrocarbon
production assets (i.e., mature assets or mature fields) and to
provide recommendations to the owner and/or operator of the
mature fields (hereafter just “client”) regarding what actions
should be taken to increase hydrocarbon production and/or to
meet regulatory guidelines.
(Spec. 119.) Notably, the claims on appeal do not require any corrective
action to be performed on a well; they merely require “a recommendation
regarding the corrective action to be performed.” (Appeal Br., Claims
App.)6
When we turn to step two of the Alice test, we find nothing sufficient
to remove the claims from the class of subject matter ineligible for patenting.
The Appellants do not point to, and we do not see, anything in the claims
that requires anything other than off-the-shelf, conventional computer and
network technology for gathering, analyzing, and sending the desired
information. (See also Spec. ]ff[ 63—67.) The claims do not involve anything
beyond the use of generic computer components (e.g., a processor, a
database, a memory, computing devices, etc.) to apply the above-identified
information-based abstract idea.
The Appellants contend that the claimed combination of elements
“impose meaningful limits on the application of the claimed steps to
improve an existing technological process (well testing and maintenance).”
(Appeal Br. 7.) However, the claims do not require well testing and they do
6 Insofar as the Examiner implies that the claims specify that “ultimately a
‘corrective action’ is taken” (Final Action 3), we disagree. The claims only
require a determination of a correction action, and a provision of “a
recommendation regarding the corrective action.” (Appeal Br., Claims App.)
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not require well maintenance. Instead, the claims only require “data about”
a group of wells and a “recommendation” regarding well maintenance.
Limiting this “data” and this “recommendation” to a particular technological
environment (i.e., hydrocarbon production) does not change its character as
information so as to lift the claims beyond an abstract idea. As pointed out
by the Appellants (see Appeal Br. 6—7), the claims are abundant with
terminology specific to well testing and maintenance environment (i.e.,
hydrocarbon production, conditions affecting hydrocarbon production,
corrective action, availability of a service providing entity, etc.). However,
this terminology only describes what information is gathered and analyzed
with entirely conventional, generic computer components.
Moreover, “[a] decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen—
what prior cases were about, and which way they were decided.” See
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). Here, the claims are comparable to those considered in Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). In
Electric Power Group, although the information at issue was limited to the
particular technological environment of power-grid monitoring, this did not
“change its character as information,” and the Federal Circuit held that
“[t]he claims in this case fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Id. The Federal Circuit also held that limiting
the claims to the particular technical environment of “power-grid monitoring
is, without more, insufficient to transform them into patent-eligible
applications of the abstract idea at their core.” Electric Power Group,
830 F.3d at 1354—55. Although “a large portion of the lengthy claims is
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devoted to enumerating types of information and information sources
available within the power-grid environment,” “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Id. at 1355.
As for the dependent claims, they only recite further details of the data
being gathered (see, e.g., dependent claims 2 and 16), a list of conditions for
identification (see, e.g., dependent claims 3,5,17, and 19), an inventory of
corrective actions (see, e.g., dependent claims 4, 5, 14, and 19), variables
involved in prioritization (see, e.g., dependent claims 4—7, 11—13, 18, 20,
and 23—25); and ownership of the service providing entity (see, e.g.,
dependent claims 8, 9, 21 and 22). These further recitals do nothing to
elevate the status of the dependent claims beyond that of an information-
based abstract idea.7
7 With particular reference to dependent claim 14, for example, it recites that
“the corrective action to be performed for the selected well” is “plugging for
abandonment,” “fracturing at least one zone,” “acidizing at least one
production zone,” “resolving a downhole mechanical issue affecting
hydrocarbon flow,” “resolving a surface mechanical issue affecting
hydrocarbon flow,” “installing artificial lift equipment,” “installing surface
tanks,” and “perforating a casing to create a new production zone.” (Appeal
Br., Claims App.) However, dependent claim 14 does not require the actual
performance of these corrective actions (i.e., plugging, fracturing, resolving,
installing, perforating, etc.), it merely describes what “corrective action” is
recommended to the client.
The same is true of dependent claims 5 and 19 which recite that a type of
corrective action “involves an artificial lift” or “involves a well perforation
at one or more bypassed zones.” (Id.)
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DECISION
We REVERSE the Examiner’s rejection of claims 1—9 and 11—24
under 35 U.S.C. § 102(b) (Rejection I).
We REVERSE the Examiner’s rejection of claim 25 under 35 U.S.C.
103 (a) (Rej ection II).
We enter a NEW GROUND OF REJECTION, pursuant to 37 C.F.R.
§ 41.50(b), rejecting claims 1—9 and 11—25 under 35 U.S.C. § 101
(Rejection III).
NON-FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 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)(iv).
REVERSED: 37 C.F.R § 41.50(b)
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