Ex Parte Mezghani et al

Patent Trial and Appeal Board

Oct 4, 2018

13902333 (P.T.A.B. Oct. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/902,333
35979 7590
Bracewell LLP
P.O. Box 61389
FILING DATE
05/24/2013
10/09/2018
Houston, TX 77208-1389
FIRST NAMED INVENTOR
Mokhles Mustapha Mezghani
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.
004159.005135 1621
EXAMINER
HENSON, MISCHITA L
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
10/09/2018 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):
docketing@bracewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOKHLES MUSTAPHA MEZGHANI,
MUSTAFA AL IBRAHIM, and
JOHANNES JACOBUS MARIA BUITING
Appeal2017-010166
Application 13/902,333
Technology Center 2800
Before GEORGE C. BEST, A VEL YN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-33 of Application 13/902,333
under 35 U.S.C. § 101 as directed toward non-statutory subject matter. Final
Act. (August 19, 2016). Appellants 1 seek reversal of the rejection pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Saudi Arabian Oil Co. is identified as an applicant and the real party in
interest. Appeal Br. 2.
Appeal2017-010166
Application 13/902,333
BACKGROUND
The '333 Application relates generally to oil exploration and
production, and, "more particularly, to estimating capillary pressure for
basin exploration and reservoir development and production." Spec. ,r 1.
Capillary pressure is a property of the particular basin that may be used to
compute the original hydrocarbon in place and estimate a basin recovery
factor. Id. ,r 2. Reservoir modeling and simulation allows prediction of
reservoir dynamic behavior, reduces uncertainties on reservoir model
predictions, and allows optimization of exploration activities and reservoir
development. Id.
Claim 1 is representative of the '333 Application's claims and is
reproduced below from the Claims Appendix.
1. A computer-implemented method for determining
capillary pressure in a reservoir, the method comprising:
accessing well log data associated with the reservoir from a
well log for a well, the well log data comprising permeability
log data, porosity log data, water saturation log data, and oil
saturation log data;
determining Thomeer parameters from the permeability log
data, the porosity log data, the water saturation log data, and the
oil saturation log data, the Thomeer parameters comprising a
fractional bulk volume, a pore geometrical factor, and a
minimum entry pressure, the determining comprising:
determining a modeled permeability;
determining a modeled porosity;
determining a modeled water saturation, and
evaluating an objective function based on one or more
linear equality constraints, one or more linear inequality
constraints, and one or more nonlinear equality constraints, the
objective function comprising:
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Application 13/902,333
w (1-w) ~ 2
F( T) = 2 11(1 -SwFAL) -So(T)ll
2 +
2
IIT - TII
wherein T is the Thomeer parameters,
SwFAL is the value of the water saturation data,
So(T) is a modeled oil saturation;
the one or more linear equality constraints comprising:
n
LB vi(Pc) =a* ¢FAL
i=l
wherein Bvi is a fractional bulk of volume occupied by
mercury,
Pc is an applied capillary pressure;
a is the conversion factor from mercury-air to oil-
water,
n is the number of pore systems in the reservoir,
cp F AL is the porosity data;
the one or more linear inequality constraints comprising:
BvFin ~ Bvi(Pc) ~ Bvrax for 1 ~ i ~ n
crin ~ Ci ~ crax for 1 ~ i ~ n
wherein Gi is the pore geometrical factor,
PdFin ~ Pdi ~ PdFax for 1 ~ i ~ n
wherein Pdi is a minimum entry pressure,
If Bvi(Pc) * 0 then Bvi + l(Pc) ~ Bvi(Pc) for 1 ~ i ~ n - 1,
Pdi ~ Pdi + 1 for 1 ~ i ~ n - 1, and
the one or more nonlinear equality constraints
compnsmg:
K(T) = KFAL(20)
wherein K(T) is the modeled permeability,
KFAL is the permeability log data; and
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Application 13/902,333
determining the capillary pressure of the reservoir using a
Thomeer model having the determined Thomeer parameters.
Appeal Br. 23-24.
Claims 11, 20, and 32 are the other independent claims on appeal.
Claim 11 is a Beauregard claim embodying the method of claim 1,
claim 20 is a claim directed to a system comprising one or more processors
programmed to evaluate the function described in claim 1, and claim 32 is
directed to a generalized computer-implemented method for determining
capillary pressure in a reservoir.
REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1-
33 are rejected under 35 U.S.C. § 101 because the claimed invention is
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more.
DISCUSSION
The Patent Act defines patent-eligible subject matter as including
"any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The
courts have created certain exceptions to the literal scope of§ 101. In
particular, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71 (2012).
Since the Supreme Court's decision in Alice Corp. v. CLS Bank Int 'l,
134 S. Ct. 2347 (2014), patent-eligible subject matter has been distinguished
from patent-ineligible laws of nature, natural phenomena, and abstract ideas
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Application 13/902,333
using a two-step process. Id. at 2355. The first step requires us to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. If they are, we must then analyze whether the
claim elements, either individually or as an ordered combination, contain an
"'inventive concept"' that "'transform[ s] the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 72-73).
Appellants present separate arguments for two groups of claims:
Group A, consisting of claims 1-31, and Group B, consisting of claims 3 2
and 33. See Appeal Br. 10-22. We address these groups separately below.
Group A
Appellants argue for reversal of the rejection of claims 1-31 as
an undifferentiated group. Appeal Br. 10-17. We select claim 1 as
representative of this group. Claims 2-31 stand or fall with claim 1. 37
C.F.R. § 4I.37(c)(l)(iv) (2015).
For the reasons set forth below, we determine that claim 1 of the '333
Application is directed to patent-ineligible subject matter.
Step 1. Appellants argue that the Examiner erred by determining that
claim 1 is directed to an abstract idea. Appeal Br. 10-13. In particular,
Appellants argue that the Examiner erred by
( 1) failing "to properly identify the abstract idea to which the
claims as a whole are directed," id. at 10;
(2) analogizing claim 1 to "economic concepts found by the
courts to be abstract ideas," id. at 11;
(3) ignoring the fact that claim 1 is directed to a clear
improvement in computer-related technology, id. at 11-12;
and
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Application 13/902,333
( 4) ignoring the fact that claim 1 does not preempt all processes
for achieving the desired result, id. at 12-13.
We address these arguments in tum.
First, Appellants argue that the Examiner reversibly erred because
[ u ]nder the first step of the Alice inquiry, the Examiner must
determine whether the claim as a whole is directed to excluded
subject matter such as an abstract idea. Here, Appellant[ s]
respectfully submit[] that the rejection fails to properly identify
the abstract idea to which the claims as a whole are directed.
Instead the Examiner has merely taken almost all of the claim
elements recited in [Appellants'] claims and labeled that
language to be an abstract idea.[] Appellant[ s] respectfully
assert[] that this practice deviates from the examination
required by Alice and is improper.
Appeal Br. 10-11 ( citation omitted).
This argument does not persuade us that the Examiner reversibly
erred. The Examiner identified the claim steps determined to be an abstract
idea. The fact that the Examiner did not give that portion of the claim a
pithy name that identifies the nature of the abstract idea is not reversible
error. To the extent that such a name is required, we determine that
Appellants' claim is directed to the abstract idea of using inverse problem
theory to estimate Thomeer parameters from well log data. See, e.g.,
Spec. ,r,r 33-75.
Second, Appellants argue that the Examiner erred because the
Examiner stated that
[ t ]he claim recites, in part, a computerized method for
performing the steps of computing a value representing the
capillary pressure of the reservoir. These steps describe the
concept of an algorithm or formula for computing a value i.e.[,]
capillary pressure. The concept described in claim 1 is not
meaningfully different than those economic concepts found by
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Application 13/902,333
the courts to be abstract ideas e.g.[,] a mathematical
relationship/formula.
Final Act. 2.
Appellants argue that claim 1, when taken as a whole, is not directed
to an economic concept. Appeal Br. 11.
This argument is not persuasive of reversible error. The Examiner did
not say that claim 1 encompassed an economic concept. Rather, the
Examiner determined that,/or the purpose of determining whether claim 1 is
directed to patent-ineligible subject matter, that there was no meaningful
difference between the subject matter of claim 1 and economic concepts
courts have found to be patent-ineligible/or the purpose of the§ 101
analysis. Final Act. 2. Making this sort of analogy is not reversible error.
Third, Appellants argue that claim 1 is analogous to the claims at
issue in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016). Appeal Br. 11-12. In McRO, the Federal Circuit
determined that the claims at issue were not directed to an abstract idea
because they were focused on a specific improvement of the relevant
technology. McRO, 837 F.3d at 1316 ("When looked at as a whole, claim 1
is directed to a patentable, technological improvement of the existing ...
techniques."); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016) (finding claims directed to a specific improvement in the
way computers operate to be patent-eligible).
Appellants argue that claim 1, as a whole, is directed to "a clear
improvement in computer-related technology." Appeal Br. 11. According
to Appellants,
prior to the invention described in the present application, it
was not possible to accurately determine capillary pressures
from standard well log data. As a result, the embodiments
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recited in the claims enable performance of a function not
previously performable by a computer. By enabling the use of
capillary pressure determinations from standard well log data,
the recited embodiments provide for the more efficient (i.e., less
costly and time-consuming) determinations of capillary
pressure of a reservoir.
Id. at 12.
"The Supreme Court has suggested that claims 'purport[ing] to
improve the functioning of the computer itself,' or 'improv[ing] an existing
technological process' might not succumb to the abstract idea exception."
Enfzsh, 822 F.3d at 1335 (citing Alice, 134 S. Ct. at 2358-59). Appellants
seek to invoke this exception. Appeal Br. 11-12. We, therefore, must ask
whether the focus of claim 1 is on a specific asserted technological
improvement or, instead, on a process that qualifies as an abstract idea for
which computers are merely invoked as a tool. See Enfish, 822 F.3d at
1335-36; see also McRO, 837 F.3d at 1314 ("We therefore look to whether
the claims in these patents focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery.").
We begin by looking to the language of claim 1. At a very general
level, claim 1 is directed to a three step process, the steps comprising
( 1) data acquisition, (2) determining Thomeer parameters from the acquired
data using a particular set of calculations, and (3) determining reservoir
capillary pressure using the results from step (2). When seen at this level of
generality, it is clear that claim 1 is directed to the abstract idea of using
inverse problem theory to determine Thomeer parameters from well log
data, i.e., step (2). Step (1) merely requires the computer to gather data, and
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Application 13/902,333
step (3) uses the determined Thomeer parameters to perform a standard
calculation of reservoir capillary pressure.
Thus, we determine that claim 1 is directed to an abstract idea. We
note that our determination is consistent with other cases involving similar
claims. For example, the Federal Circuit has determined claims to be
directed to an abstract idea where "[t]he focus of the asserted claims ... is
on collecting information, analyzing it, and displaying certain results of the
collection and analysis." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (2016). As the Federal Circuit has explained:
Information as such is an intangible. Accordingly we have
treated collecting information, including when limited to
particular content (which does not change its character as
information), as within the realm of abstract ideas. In a similar
vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea
category.
Id. at 1353-54 (citations omitted).
In this case, claim 1 combines the abstract ideas of data collection and
mathematical manipulation of the collected data. As such, it is clearly
focused upon an abstract idea.
In this regard, claim 1 of the '333 Application is similar to the claims
in dispute in Parker v. Flook, 437 U.S. 584 (1978).
In Flook, claims requiring the use of a specific equation were
unpatentable because they simply provided a new and
presumably better method of calculating alarm limit values.
The mathematical formula itself was an abstract idea and the
computer implementation was purely conventional because the
use of computers for automatic monitoring-alarming was well
known.
McRO, 837 F.3d at 1312 (quote marks, brackets, and citations omitted).
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In sum, we determine that claim 1 of the '333 Application is directed
to an abstract idea.
Fourth, Appellants argue that claim 1 is not an abstract idea because it
does not preempt all processes for determining reservoir capillary pressure.
Appeal Br. 12-13. Appellants assert that "the clear absence of preemption is
an independent confirmation that claims 1-31 are not directed to the judicial
exception of an abstract idea and are thus patentable subject matter." Id.
We disagree. We begin by noting that Appellants are considering
whether claim 1 preempts all methods of determining reservoir capillary
pressure. This is the wrong question because it is framed at too high a level
of abstraction. The proper question is whether claim 1 preempts all use of
the underlying abstract idea, which is the use of inverse problem theory to
derive Thomeer parameters from well log data. See Alice, 134 S. Ct. at
2354--55 (explaining that the judicially created exception placing abstract
ideas outside the scope of patentable subject matter arises from concerns
about preemption).
For the purpose of this opinion, it does not matter whether claim 1
preempts all use of inverse problem theory to derive Thomeer parameters
from well log data. Even if we were to assume that it does not, a finding that
claim 1 is directed to patent-eligible subject matter is not compelled. As the
Federal Circuit has explained, "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Step 2. Appellants argue that claim 1 includes significantly more than
the alleged abstract idea. Appeal Br. 13-17. In particular, Appellants argue
that claim 1 effects an improvement in another technology or technical field
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and thus is analogous to the claims in Diamond v. Diehr, 450 U.S. 175
(1981), or In re Abele, 684 F.2d 902, 908---09 (CCPA 1982). Id.
For the following reasons, we do not find Appellants' arguments
persuasive.
In the second step of the Alice test, we consider the elements of each
claim, individually and as an ordered combination, to determine whether
additional elements transform the nature of the claim into a patent-eligible
application of the law of nature, natural phenomenon, or abstract idea. See
Mayo, 566 U.S. at 77-80. "The Supreme Court has described the second
step of this analysis as a search for an 'inventive concept'-i.e., an element
or combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Ariosa Diagnostics, 788 F.3d at 1375 (quoting Mayo, 566
U.S. at 72-73).
Once again, we begin by looking to claim 1 's language. In addition to
the abstract idea, claim 1 requires implementing the abstract idea in a
computer environment, a data collection step, and an additional calculation
step. None of the additional elements added by claim 1 are sufficient to
transform the subject matter of claim 1 into a patent-eligible invention.
We begin considering claim 1 's preamble, which requires that
implementation of the abstract idea using a computer. As the Supreme
Court has stated,
if a patent's recitation of a computer amounts to a mere
instruction to implement an abstract idea on a computer, that
addition cannot impart patent eligibility. This conclusion
accords with the pre-emption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers, ... wholly
generic computer implementation is not generally the sort of
additional feature that provides any practical assurance that the
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process is more than a drafting effort designed to monopolize
the abstract idea itself.
Alice, 134 S. Ct. at 2358 (internal quote marks, brackets, ellipses, and
citations omitted).
Similarly, routine data collection of the sort required by claim 1 is
insufficient to impart patentability. See, e.g., OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) (explaining that
"well-understood, routine, conventional data-gathering activities ... do not
make the claims patent eligible.").
Finally, claim 1 's step of "determining the capillary pressure of the
reservoir using a Thomeer model having the determined Thomeer
parameters" also is insufficient. As the '333 Application's Specification
explains, the Thomeer model is routinely used to determine reservoir
capillary pressure using input values of the Thomeer parameters. Spec.
,r,r 16-31. This step is not sufficient to render the subject matter of claim 1
patent-eligible. As the Federal Circuit has explained,
[ w ]ithout additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "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."
Digitech Image Techs., LLC v. Elecs.for Imaging Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (quoting Flook, 437 U.S. at 595 (internal quotations
omitted)).
Nor does consideration of the method recited in claim 1 as an ordered
set of steps demonstrate an inventive concept sufficient to transform a claim
directed to a patent-ineligible abstract idea into patent-eligible subject
matter. As discussed above, the additional elements added to the abstract
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idea in claim 1 amount to nothing more than an instruction to take the
abstract idea, apply it with a computer, and then perform additional
mathematic calculations.
We have considered Appellants' arguments that claim 1 is analogous
to claims found to be patent eligible in Diehr and Abele. Appeal Br. 14, 16.
We find these arguments to be unpersuasive.
As the Supreme Court explained, Diehr' s overall process was patent
eligible because of the way the additional steps of the process integrated the
known mathematical equation into the process as a whole. Mayo, 566 U.S.
at 80-81. Those steps included "'installing rubber in a press, closing the
mold, constantly determining the temperature of the mold, constantly
recalculating the appropriate cure time through the use of the formula and a
digital computer, and automatically opening the press at the proper time."'
Id. ( quoting Diehr, 450 U.S. at 187). Indeed, as the Court noted in Alice, the
process in Diehr used a thermocouple to constantly record the temperature
within the rubber mold, which was "something 'the industry ha[ d] not been
able to obtain."' 134 S. Ct. at 2358 (quoting Diehr, 450 U.S. at 178 and
n.3).
In contrast, claim 1 directs a computer to access standard well log data
that is routinely maintained in the industry, use an arguably novel and
nonobvious mathematical technique to derive Thomeer parameters from this
standard data set, 2 and then perform a standard calculation of reservoir
capillary pressure. Thus, claim 1 is, if anything, the negative image of
Diehr' s claims. Appellants' proposed analogy, therefore, is unpersuasive.
2 We express no opinion regarding whether the subject matter of claim 1 is,
in fact, novel and not obvious as those terms are used in§§ 102 and 103.
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The proposed analogy to the claims in Abele is similarly unpersuasive.
In Abele, the Federal Circuit found that claims directed to a method used to
improve the quality of a CAT scan image while reducing the patient's
exposure to x-rays were patent eligible using the Freeman/Walter/Abele test.
Abele, 684 F.2d at 908---09. The Court found that applicants had discovered
"an application of an algorithm to process steps which are themselves part of
an overall process which is statutory." Id. at 909.
In this case, however, the abstract idea is substantially the entirety of
the claimed subject matter. The portions of claim 1 that are not part of the
abstract idea are themselves routine. Appellants do not argue that they
would be patentable in the absence of those portions of the claim that
constitute the abstract idea.
GroupB
Appellants argue for reversal of the rejection of claims 32 and 33 as a
group. Appeal Br. 17-22. We select claim 32 as representative of this
group. Claim 33 will stand or fall with claim 32. 37 C.F.R.
§ 4I.31(c)(l)(iv).
Claim 32 reads:
32. A computer-implemented method for determining
capillary pressure in a reservoir, the method comprising:
accessing well log data associated with the reservoir for a well
log for a well, the well log data comprising permeability log
data, porosity log data, water saturation log data, and oil
saturation log data;
determining a fractional bulk volume, a pore geometrical factor,
and a minimum entry pressure from the well log data, the
determining comprising:
evaluating an objective function measuring the difference
between the permeability log data and the modeled
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permeability, the porosity log data and a modeled porosity, and
the oil saturation log data and a modeled oil saturation, the
modeled permeability, the modeled porosity, and the modeled
oil saturation each a function of the fractional bulk volume, the
pore geometrical factor, and the minimum entry pressure; and
determining the capillary pressures of the reservoir using the
fractional bulk volume, the pore geometrical factor, and the
minimum entry pressure,.[3J
Appeal Br. 32.
Appellants' arguments for reversal of the rejection of claim 32 as
directed to a patent-ineligible abstract idea are substantially the same as the
arguments presented with respect to the rejection of claim 1. See Appeal Br.
17-22. As discussed above, we did not find those arguments persuasive
with respect to claim 1, and we also do not find them persuasive with respect
to the rejection of claim 32. We, therefore, affirm the rejection of claims 32
and 33 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-33
of the '333 Application.
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
3 For the purpose of this opinion, we assume that the final comma in claim
32 as reproduced in the Claims Appendix is a typographical error. If
prosecution of the '333 Application continues, correction is suggested.
15