Ex Parte Jones et alDownload PDFPatent Trial and Appeal BoardJan 17, 201813878588 (P.T.A.B. Jan. 17, 2018) Copy Citation 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 001001.2009-IP-026627 US 9750 EXAMINER DALBO, MICHAEL J ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/878,588 99701 7590 Howard L. Speight 742 Central Avenue Napa, CA 94558 04/10/2013 01/19/2018 Christopher M. Jones 01/19/2018 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): howard@hspeight.com darryl @hspeight. com eofficeaction @ appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER M. JONES, MICHAEL T. PELLETIER, ABBAS SAMI EYUBOGLU, and CYRUS ASPI IRANI, Appeal 2018-000765 Application 13/878,588 Technology Center 2800 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. Opinion for the Board by OWENS, Administrative Patent Judge. Opinion concurring by NAGUMO, Administrative Patent Judge. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ rejection of claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an oil well fluid analysis method and computer-readable medium. Claims 1 and 8 are illustrative: 1. A method comprising: Appeal 2018-000765 Application 13/878,588 using a formation testing tool to measure a hydrocarbon composition of a reservoir fluid sampled from a well drilled by a drill string after volatile hydrocarbon components of the reservoir fluid have substantially vaporized; a computer accepting the measured hydrocarbon composition; the computer analyzing the measured hydrocarbon composition of the reservoir fluid by solving a system of N simultaneous equations of state, N > 1, having a plurality, greater than N, of unknowns and a constraint useful to eliminate some of the plurality of unknowns to produce an estimated live-oil hydrocarbon composition of the reservoir fluid before the volatile hydrocarbon components have substantially vaporized. 8. A non-transitory computer-readable medium containing computer instructions therein for causing a computer to: accept from a formation testing tool a measured hydrocarbon composition of a reservoir fluid sampled from a well being drilled by a drill string after volatile hydrocarbon components of the reservoir fluid have substantially vaporized; analyze the measured hydrocarbon composition of the reservoir fluid by solving a system of N simultaneous equations of state, N > 1, having a plurality, greater than N, of unknowns and a constraint useful to eliminate some of the plurality of unknowns to produce an estimated live-oil hydrocarbon composition of the reservoir fluid before the volatile hydrocarbon components have substantially vaporized. The References Zuo (Zuo ’768) US 2009/0192768 A1 July 30, 2009 Zuo (Zuo ’310) US 2009/0248310 A1 Oct. 1,2009 Abad US 2010/0229623 A1 Sept. 16,2010 Zuo (Zuo ’949) US 2011/0088949 A1 Apr. 21,2011 Karen Schou Pedersen and Peter L. Christensen, Phase Behavior of Petroleum Reservoir Fluids — Ch. 5: C7+ Characterization, 81—113 (Taylor & Francis 2007) (hereinafter Pedersen). 2 Appeal 2018-000765 Application 13/878,588 Abbas Khaksar Manshad and Mohsen Edalat, Application of Continuous Polydisperse Molecular Thermodynamics for Modeling Asphaltene Precipitation in Crude Oil Systems, 22 Energy & Fuels 2678—86 (2008) (hereinafter Manshad). The Rejections The claims stand rejected as follows: claims 1—14 under 35U.S.C. § 101 as failing to claim patent eligible subject matter, claims 1,5, 8, and 12 under 35 U.S.C. § 103 over Zuo ’310 in view of Manshad and Abad, claims 2, 4, 7, 9, 11, and 14 under 35 U.S.C. § 103 over Zuo ’310 in view of Manshad, Abad and Zuo ’949, claims 3 and 10 under 35 U.S.C. § 103 over Zuo ’310 in view of Manshad, Abad and Pedersen, and claims 6 and 13 under 35 U.S.C. § 103 over Zuo ’310 in view of Manshad, Abad and Zuo ’768. OPINION We affirm the rejection under 35 U.S.C. § 101 and reverse the rejections under 35 U.S.C. § 103. Rejection under 35 U.S.C. §101 The Appellants argue claims 1—14 as a group (App. Br. 4—9). We therefore limit our discussion to the independent claims, i.e., claims 1 and 8. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme Court stated in Bilski v. Kappos, 561 U.S. 593, 601 (2010) that “[t]he Court’s precedents provide three specific exceptions to § 101 ’s broad patent-eligibility 3 Appeal 2018-000765 Application 13/878,588 principles: ‘laws of nature, physical phenomena, and abstract ideas.’ [Diamond v.] Chakrabarty, [447 U.S. 303,] 309, 100 S. Ct. 2204 [(1980)].” Determining whether a claimed invention is patent-eligible subject matter requires determining whether the claim is directed toward a patent-ineligible concept and, if so, determining whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application. See Alice Corp. v. CLS Bank Int 7, 134 S. Ct. 2347, 2350 (2014). The Appellants’ claims 1 and 8 require analyzing “the measured hydrocarbon composition of the reservoir fluid by solving a system of N simultaneous equations of state, N > 1, having a plurality, greater than N, of unknowns and a constraint useful to eliminate some of the plurality of unknowns to produce an estimated live-oil hydrocarbon composition of the reservoir fluid before the volatile hydrocarbon components have substantially vaporized.” The Appellants argue (Reply Br. 4): The instant claims define a specific implementation, i.e., solving simultaneous equations of state with more unknowns that equations using a constraint, to solve the problem of estimating the hydrocarbon components of live oil[1] when only the hydrocarbon components of dead oil,[2] as collected by a formation testing tool, are known. The instant claims should be found to satisfy 35 USC 101 for that reason alone and the analysis should stop there. Id. [Enfish v. Microsoft, 822 F.3d 1327, 1339 (Fed. Cir. 2016)] (“[b]ecause the claims are not directed to an abstract idea under step one of the Alice analysis, we do not need to proceed to step two of that analysis”). 1 Live oil is “fluid at reservoir conditions” (Spec. 11). 2 Dead oil is “oil that has lost volatile components” (Spec. 123). 4 Appeal 2018-000765 Application 13/878,588 The Appellants’ above-stated claim requirement encompasses the abstract idea of simultaneously solving equations of state subject to constraints which reduce the number of unknowns of a dead oil hydrocarbon composition so the equation system can be solved to estimate the corresponding live oil hydrocarbon composition. Although that simultaneous solution of equations is limited to oil hydrocarbon compositions, ‘“if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Parker v. Flook, 437 U.S. 584, 596 (1978) (quoting In re Rickman, 563 F.2d 1026, 1030 (C.C.P.A. 1977)). See also, Alice, 134 S. Ct. at 2358 (‘“[T]he prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular technological environment.”) (quoting Bilski v. Kappos, 561 U.S. 593, 610 (2010) (internal quotation marks omitted).3 The Appellants argue (App. Br. 9): The results of the equation (i.e., solving a system of N simultaneous equations of state, N > 1, having a plurality, greater than N, of unknowns) is an estimate of the composition of the live oil, which was not previously available without the technique of the instant claims. As such, the instant claims are a “specific technological modification,” and are “significantly more than a patent upon the [ineligible concept] itself,” Alice, 134 S.Ct. at 2355, and satisfy the second step of the Alice analysis. 3 The Appellants do not appear to assert that they invented using constraints to reduce the number of reservoir oil unknowns sufficiently to enable equations for estimating characteristics of the oil to be solved. 5 Appeal 2018-000765 Application 13/878,588 The Appellants’ above-stated claim requirement is not limited to any particular technique. Instead, it recites an abstract idea encompassing all techniques for the recited simultaneous solution of equations of state subject to constraints to analyze dead oil. Consequently, that claim limitation does not require significantly more (or, actually, any more) than the patent ineligible concept. The Appellants argue that “[t]he claims recite a machine that includes a formation testing tool that produces the data that is analyzed by a computer. The claims should be found to satisfy 35 USC 101 for that reason alone” (Reply Br. 2). The Appellants’ claim 1, but not claim 8, requires “using a formation testing tool to measure a hydrocarbon composition of a reservoir fluid sampled from a well drilled by a drill string after volatile hydrocarbon components of the reservoir fluid have substantially vaporized.” No particular formation testing tool is recited. Instead, the claim encompasses any formation testing tool capable of obtaining the data input to the subsequently-recited algorithm. Such data gathering does not render an abstract idea patent eligible. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“[M]ere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989). See also OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) (“These processes are well-understood, routine, conventional data-gathering activities that do not make the claims patent eligible.”); Mayo Collaborative Services v. Prometheus Labs., 6 Appeal 2018-000765 Application 13/878,588 Inc., 566 U.S. 66, 79 (2012) (“Purely ‘conventional or obvious’ ‘[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”) (quoting Flook, 437 U.S. at 591). For the above reasons we are not persuaded of reversible error in the rejection under 35 U.S.C. § 101. Rejections under 35 U.S.C. § 103 We need address only the independent claims (1 and 8).4 To meet those claims’ requirement of analyzing “the measured hydrocarbon composition of the reservoir fluid by solving a system of N simultaneous equations of state, N > 1, having a plurality, greater than N, of unknowns and a constraint useful to eliminate some of the plurality of unknowns to produce an estimated live-oil hydrocarbon composition of the reservoir fluid before the volatile hydrocarbon components have substantially vaporized,” the Examiner relies upon Manshad (Final Act. 8—9). Manshad discloses an asphaltene precipitation prediction modeling technique wherein i simultaneous Gibbs free energy minimization equations of two types (31, 32) and a third equation (33) are solved simultaneously to calculate three unknowns (crude oil liquid phase solvent volume fraction ((psL), asphaltene t segment liquid phase volume fraction (cpaiL) and asphaltene solubility parameter (8a))5 (p. 2684). 4 The Examiner does not rely upon Zuo ’949, Pedersen or Zuo ’768 for any disclosure that remedies the deficiency in Zuo ‘310, Manshad, Abad as to the limitations in the independent claims (Final Act. 13—18). 5 The asphaltene solubility parameter (8a) is not in any of the three equations (31—33) and Manshad does not disclose how that parameter is calculated. 7 Appeal 2018-000765 Application 13/878,588 The Examiner finds that Manshad’s “equations 32 and 33 provide mathematical relationships, i.e. constraints, which are utilized in order to solve the system of ‘i’ equations in equation 31, seeing as they places [sic] a constraint on the possible solutions” (Final Act. 9). ‘“[DJuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.’” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ Specification states that “the constraints 330 provide the information from which inferences can be made so that the number of unknowns in the system of equations of state is reduced, which allows the system of equations to be solved” (Spec. 7:5—7). Also, the Appellants’ independent claims (1 and 8) state that the constraint is “useful to eliminate some of the plurality of unknowns.” The Examiner does not establish that the broadest reasonable interpretation of the Appellants’ claim term “constraint” consistent with the Specification includes Manshad’s two of three simultaneously-solved equations. Thus, the Examiner has not established a prima facie case of obviousness of the Appellants’ claimed method or computer-readable medium. DECISION/ORDER The rejection of claims 1—14 under 35 U.S.C. § 101 as failing to claim patent eligible subject matter is affirmed. The rejections under 35 U.S.C. § 103 of claims 1, 5, 8, and 12 over Zuo ’310 in view of Manshad and Abad, claims 2, 4, 7, 9, 11, and 14 over Zuo ’310 in view of Manshad, Abad and Zuo ’949, claims 3 and 10 over Zuo ’310 in view of Manshad, 8 Appeal 2018-000765 Application 13/878,588 Abad and Pedersen, and claims 6 and 13 over Zuo ’310 in view of Manshad, Abad and Zuo ’768 are reversed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER M. JONES, MICHAEL T. PELLETIER, ABBAS SAMI EYUBOGLU, and CYRUS ASPI IRANI, Appeal 2018-000765 Application 13/878,588 Technology Center 2800 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. Opinion concurring by NAGUMO, Administrative Patent Judge. I join the affirmance of the rejection under 35 U.S.C. § 101, and I therefore concur in the judgment. While in most cases I believe the Board should rule on all rejections before it, in this instance, where the argued issues of obviousness have to do with the same abstract idea—solving a system of equations—that we have held renders the subject ineligible for patentability, I would not reach the issue of obviousness. However, should we be called upon to rule on the obviousness rejection, I would resolve the issue on the basis of the first prong argued by Appellants, rather than on the second prong, selected by the Majority. Appeal 2018-000765 Application 13/878,588 In Appellants’ words, Manshad teaches solving 2i + 1 simultaneous equations (Manshad at 2684, right column, immediately under equation (33) states that “[tjhere are obviously i simultaneous equations of types (31) and (32)”) to calculate 2 + i unknowns (Manshad’s cpLai is different for each i but (pLs and ba are not). Manshad’s i > 1 which means that 2i + 1 > 2 + i, and that in Manshad the number of simultaneous equations is greater than the number of unknowns, which does not satisfy the claim limitation in question. (App. Br. 11, last para.) The Examiner responds, “[t]he system of equations within equation 31 contains ‘i’ number of equation with ‘i’+l number of unknowns, i.e. one for each (pLai and (pLs. Thus, meeting the limitation of wherein the number of unknowns is greater than the number of equations.” (Ans., para, bridging 6— 7.) The Examiner’s analysis, however, overlooks the presence of variables cpLai and mai in equation (32), which generate another ‘i’ equations. It follows that the Examiner erred harmfully in finding that Manshad meets the limitation of more unknowns than simultaneous equations. Appellants appear to point only to a functional implied definition of the term “constraint.” Given the potential breadth of a functional definition, and the dearth of analysis of this term, it suffices, in my opinion, to settle on the clear argument and counter-argument regarding the number of equations and the number of unknowns, rather than speculating on the basis of an uncertain definition. I would therefore also affirm the obviousness rejection, but on a different basis. 2 Copy with citationCopy as parenthetical citation