Ex Parte Wu

Patent Trials and Appeals Board

Jun 10, 2019

13973090 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/973,090 08/22/2013 Jianghui Wu
87884 7590 06/12/2019
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
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.
SMP4-55606-US 8455
EXAMINER
CROHN, MARK I
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
06/12/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@mktlaw.com
tthigpen@mktlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANGHUI WU
Appeal2018-007747
Application 13/973,090
Technology Center 2800
Before CATHERINE Q. TIMM, MERRELL C. CASHION, JR., and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-21. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Baker Hughes Incorporated. According to the
Appeal Brief, Baker Hughes, LLC is the real party in interest. Appeal Brief
filed November 13, 2017 ("App. Br."), 1.
2 Final Office Action entered May 12, 2017 ("Final Act.").
Appeal2018-007747
Application 13/973,090
STATEMENT OF THE CASE
Appellant claims a method and apparatus for estimating a parameter
of interest of an earth formation intersected by a borehole (independent
claims 1, 14, and 18), and a non-transitory computer-readable medium
product having instructions thereon that, when executed, cause at least one
processor to perform a method (independent claim 19). Claim 1 illustrates
the subject matter on appeal and is reproduced below with contested
language italicized:
1. A method for estimating a parameter of interest of an
earth formation intersected by a borehole, the method
compnsmg:
conducting a flow rate analysis on fluid sampled from the
formation via a probe contacting a wall of the borehole,
the flow rate analysis comprising using a processor to
adjust a pressure measurement using a correction factor,
wherein the correction factor compensates for total
compressibility.
App. Br. 15 (Claims Appendix) (emphasis added and spacing altered
relative to original).
The Examiner maintains the following rejections in the
Examiner's Answer entered May 24, 2018 ("Ans."):
I. Claims 1-20 under 35 U.S.C. § 101 as directed to subject
matter judicially excepted from patenting without significantly more;
II. Claims 1-18 and 21 under 35 U.S.C. § 103 as unpatentable
over Pop et al. (US 2004/0045706 Al, published March 11, 2004); and
III. Claims 19 and 20 under 35 U.S.C. § 103 as unpatentable over
Pop in view of Gutierrez Ruiz et al. (US 9,243,476 B2, issued January 26,
2016).
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1-20 under 35 U.S.C. § 101, and rejections of claims 1-21 under
35 U.S.C. § 103, for the reasons set forth in the Final Action, the Answer,
and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each ground of rejection
the Appellant contests. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94
USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ( cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the
Examiner had failed to make a prima facie case, "it has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections.")).
Rejection I
We tum first to the Examiner's rejection of claims 1-20 under 35
U.S.C. § 101 as directed to subject matter judicially excepted from patenting
without significantly more. Final Act. 7. To address this rejection,
Appellant does not present arguments directed to the separate patentability
of any particular claim. App. Br. 5-9. We therefore select claim 1 as
representative, and decide the appeal as to this rejection of claims 1-20
based on claim 1 alone. 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
35 U.S.C. § 101 states that"[ w ]hoever 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." This section of the statute,
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however, must be read within the confines of the U.S. Constitution, which
states that Congress's power is limited to laws that "promote the Progress of
... useful Arts." U.S. Const. art. I, § 8, cl. 8. According to the Supreme
Court, "[p ]henomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work." Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70-72 (2012) (quoting Diamond v.
Diehr, 450 U.S. 175, 185 (1981) (quoting Gottschalkv. Benson, 409 U.S.
63, 67 (1972)). "And monopolization of those tools through the grant of a
patent might tend to impede innovation more than it would tend to promote
it." Id.
As stated in Alice:
Accordingly, in applying the§ 101 exception, we must
distinguish between patents that claim the building blocks of
human ingenuity and those that integrate the building blocks
into something more, thereby transforming them into a patent-
eligible invention. The former would risk disproportionately
tying up the use of the underlying ideas and are therefore
ineligible for patent protection. The latter pose no comparable
risk of pre-emption, and therefore remain eligible for the
monopoly granted under our patent laws.
Alice, 573 U.S. at 217 (internal quotations and citations to Mayo omitted).
In Alice, the Court extended a framework that had been used in Mayo for
distinguishing claims pre-empting laws of nature, natural phenomena, and
abstract ideas from claims amounting to patent-eligible applications of those
concepts. As stated in Alice:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask, what
else is there in the claims before us? To answer that question,
we consider the elements of each claim both individually and as
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an ordered combination to determine whether the additional
elements transform the nature of the claim into a patent-eligible
application. We have described step two 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.
Alice, 573 U.S. at 217-18 (internal quotations and citations omitted).
In 2014, the Office provided Interim Guidance on Patent Subject
Matter Eligibility (79 Fed. Reg. 74618 (Dec. 15, 2014)), which added a first
step of determining whether the claim is directed to one of the statutory
classes of invention (process, machine, manufacture or composition of
matter) enunciated in § 101.
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner used the
three-step framework of the 2014 Interim Guidance. Final Act. 7-8. For the
first step, the Examiner determines that the method of independent claim 1
belongs to the statutory class of a process. Final Act. 8.
For the second step, the Examiner determines that the recitation in
claim 1 of "conducting a flow rate analysis ... wherein the correction factor
compensates for total compressibility" describes "mathematical algorithms,
mathematical relationships, mathematical formulas, and calculations without
significantly more beyond the abstract idea of mathematically compensating
for errors in total compressibility." Final Act. 8.
For the third step, the Examiner determines that claim 1 "analyzed as
a whole" does not recite elements that are "significantly more" than the
abstract idea itself. Id. Specifically, the Examiner determines that the
preamble of claim 1 "describes only a technological environment," the
recitation in claim 1 of "fluid sampled from the formation via a probe
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contacting a wall of the borehole" describes insignificant pre-solution data
gathering using conventional equipment, and the recitation in claim 1 of "the
flow rate analysis comprising using a processor to adjust a pressure
measurement using a correction factor" describes a generic processor used
as a tool to perform the abstract mathematical algorithm. Id. ( emphasis
omitted).
Appellant argues that "the present claims entail an unconventional
technological solution to a technological problem, even though employing
arguably conventional components." App. Br. 7 (citing Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1300--01 (Fed. Cir. 2016)).
Appellant argues that "[a]spects of the present disclosure" improve the
accuracy of pressure measurements taken by a tool that samples fluids from
a formation using a probe member in a borehole, by accounting for the
effects of total system compressibility on the pressure measurements. App.
Br. 6, 8 (citing Spec. ,r,r 16-20, 35--40). Appellant argues that "[t]otal
compressibility as used in the specification refers to compressibility of the
fluid system modeled by taking into account compressibilities and
saturations of predominant fluids in the tool-formation system along with the
compressibility of the rock matrix corresponding to the portion of the
formation containing such fluids and interacting with the sampling tool."
App. Br. 8-9 ( citing Spec. ,r 19) ( emphasis added).
Appellant's arguments are unpersuasive of reversible error in the
Examiner's rejection, however, for reasons discussed below.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) ("2019 Guidance"). Under the 2019 Guidance, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupmgs of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Guidance 54--57.
Under step 1 of the 2019 Guidance we determine that claim 1 recites
mathematical concepts. The method estimates a parameter, i.e., a
mathematical variable that represents a characteristic such as the
permeability of a rock formation or the mobility of the fluid in the rock
formation, based on pressure measurements. Spec. ,r,r 2-3. The method
uses a correction factor, i.e., a parameter obtained using a mathematical
function, to adjust a pressure measurement. See claim 1, which recites, as its
sole step, "conducting a flow rate analysis ... comprising ... adjust[ing] a
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pressure measurement using a correction factor, wherein the correction
factor compensates for total compressibility."
Review of Appellant's Specification confirms our determination that
claim 1 recites a judicial exception based on mathematical concepts. The
Specification describes calculating an adjustment pressure (pa) ( correction
factor) that may be used to correct ( or adjust) measured time-dependent
pressure (p(t)) (a pressure measurement) by first applying equation (1)
(below) to calculate dimensionless adjustment pressure (pa,d) using, among
other parameters, total compressibility (ct):
where
Spec. ,r,r 34, 35. The Specification explains that adjustment pressure (pa)
( correction factor) can be calculated from the dimensionless adjustment
pressure (pa,d) determined from equation (1) using equation (2), and can be
expressed as a function of time:
(2)
Spec. ,r 36. The Specification explains that the adjustment pressure (pa)
( correction factor) so calculated may then be subtracted from measured
time-dependent pressure (p(t)), to determine the adjusted pressure. Spec.
,r 37.
The Specification thus describes adjusting a pressure measurement
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using a correction factor that compensates for total compressibility by first
calculating a correction factor ( adjustment pressure) using a mathematical
equation that takes into account total compressibility, and then adjusting a
pressure measurement by subtracting the correction factor ( adjustment
pressure) from the measured pressure. Accordingly, consistent with this
description in the Specification, the limitation in claim 1 of "conducting a
flow rate analysis ... comprising ... adjust[ing] a pressure measurement
using a correction factor, wherein the correction factor compensates for total
compressibility" recites mathematical calculations, concepts, or
relationships, which are the basic tools of scientific and technological work.
And, in fact, claim 1 is not limited to the correction factor disclosed in the
Specification, but seeks to pre-empt the use of any correction factor that
compensates for total compressibility.
We next determine whether claim 1 as a whole integrates the recited
mathematical concepts into a practical application. 2019 Guidance, 84 Fed.
Reg. 54--55. In so doing, we look to whether an additional element or
combination of elements recited in the claim-beyond the mathematical
concepts-integrates the mathematical concepts into a practical application.
Id.
The preamble of claim 1 ("[a] method for estimating a parameter of
interest of an earth formation intersected by a borehole") merely links the
mathematical estimation of a mathematical parameter to a particular
technological environment. Parker v. Flook, 437 U.S. 584, 588-90 (1978).
And the Specification explains that collecting fluid as recited in claim 1
("fluid sampled from the formation via a probe contacting a wall of the
borehole") is a well-known fluid collection technique in the art. Spec. ,r 2.
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Consequently, this step of claim 1 adds only insignificant extra-solution
activity to the mathematical estimation. Bilski v. Kappas, 561 U.S. 593,
611-12, (2010) (well-known random analysis techniques to establish the
inputs of an equation were token extra-solution activity). The further
recitation in claim 1 of "conducting a flow rate analysis on [the] fluid ...
comprising using a processor" merely recites instructions to implement the
mathematics on a generic processor. Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (holding that merely implementing a mathematical principle on a
general purpose computer is a patent ineligible abstract idea).
The elements of claim 1 in their entirety, therefore, link the recited
mathematical concepts to a particular technological environment, and recite
instructions to implement the mathematical concepts on a generic processor,
while also reciting insignificant extra-solution activity. Claim 1 as a whole
does not apply, rely on, or use the mathematical concepts in a manner that
imposes a meaningful limit on the mathematical concepts and, thus, does not
integrate the mathematical concepts into a practical application. 2019
Guidance, 84 Fed. Reg. 54; Diamond v. Diehr, 450 U.S. 175, 192 n.14
(1981) ( explaining that the process in Flook was ineligible not because it
contained a mathematical formula, but because it did not integrate the
formula into the process as a whole in a way that transformed the process
into an inventive application of the formula).
As discussed above, Appellant argues that the method of claim 1
provides a technological solution to a technological problem because the
method improves the accuracy of pressure measurements by correcting for
the effects of total system compressibility, which Appellant asserts includes
the compressibility of the rock matrix. App. Br. 6, 8-9.
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Appellant, however, does not direct us to any factual evidence
supporting this asserted improved pressure measurement accuracy achieved
by the method of claim 1, such as evidence of record comparing pressure
measurements determined using Appellant's method to those determined
using technology that existed at the time of filing. Id. Moreover, evidence
that the specific correction factor disclosed in the Specification results in
technological improvement would not be convincing because claim 1 is not
limited to the correction factor described in the Specification.
In addition, contrary to Appellant's arguments, "total compressibility"
as recited in claim 1 need not include the compressibility of the rock matrix.
Specifically, the paragraph of the Specification cited by Appellant as
describing "[t]otal compressibility as used in the specification" (App. Br. 8-
9), states that "[t ]otal compressibility may be defined as compressibility of
the fluid system modeled by taking into account compressibilities and
saturations of predominant fluids in the tool-formation system along with the
compressibility of the rock matrix corresponding to the portion of the
formation containing such fluids and interacting with the sampling tool."
Spec. ,r 19. This paragraph goes on to state that, "[f]or example, total
compressibility may be defined as compressibility of the fluid system
modeled as a function of rock compressibility, oil compressibility, water
compressibility, oil compressibility, gas compressibility, oil saturation, water
saturation, gas saturation, and so on, or combinations of the same." Id.
This description of "total compressibility" in paragraph 19 of the
Specification indicates that "total compressibility may be defined" in the
manner described in the paragraph, and further provides an exemplary
description of the phrase. Use of the permissive "may" and "for example"
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indicates that the description in this paragraph does not constitute a limiting
definition of "total compressibility," but, rather, provides an optional way to
define this phrase. We accordingly examine whether the remainder of the
Specification provides any disclosure that informs or limits interpretation of
"total compressibility" as this phrase is used in claim 1.
Paragraph 35 of the Specification relates to "[an] embodiment[] of the
present disclosure" that describes calculating an adjustment pressure that
may be used as a correction factor. (Emphasis added.) In this paragraph,
total compressibility is defined as the sum of rock formation compressibility,
oil compressibility (times oil saturation), water compressibility (times water
saturation), and gas compressibility (times water saturation), which is
consistent with the description of "total compressibility" in paragraph 19.
Other than repeatedly indicating that "the correction factor compensates for
total compressibility" (i1i17, 9, 10, 12, 15, 19, 42), and indicating that the
method of the invention may include determining the product of formation
porosity and total compressibility (i1i1 7, 11, 44 ), we find no further
description of "total compressibility" in the Specification.
Because limitations from the Specification may not be read into the
claims, claim 1 does not require the recited "total compressibility" to include
the compressibility of the rock matrix, although claim 1 does not exclude the
compressibility of the rock matrix from being included in the "total
compressibility." Accordingly, even if the method of claim 1 improves the
accuracy of pressure measurements by correcting for the effects of total
system compressibility, including the compressibility of the rock matrix as
Appellant argues, it is unclear on the record before us how that specific
improvement is reflected in claim 1 itself, which appears to be broader in
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scope than the asserted improvement.
We also are not persuaded that Amdocs supports Appellant's assertion
that "the present claims entail an unconventional technological solution to a
technological problem, even though employing arguably conventional
components." App. Br. 7. In Amdocs, the court determined that the claim at
issue was tied to a specific structure of various components ( network
devices, gatherers, ISMs, a central event manager, a central database, a user
interface server, and terminals or clients), and was narrowly drawn so as to
not preempt any and all generic enhancements of data in a similar system.
Amdocs, 841 F.3d at 1301. The court further determined that the claim at
issue did not merely combine the components in a generic manner, but
instead purposefully arranged the components in a distributed architecture to
achieve a technological solution to a technological problem specific to
computer networks. Id. Unlike the claim in Amdocs, claim 1 is not tied to a
specific structure of various components, but recites only conducting a flow
rate analysis on fluid sampled from a formation via a probe contacting a wall
of a borehole. Furthermore, claim 1 is broadly drawn to preempt all
methods of conducting a flow rate analysis on such fluid that involve using a
generic processor to adjust a pressure measurement to compensate for total
compressibility. Consequently, Appellant's reliance on Amdocs does not
persuade us that the method of claim 1 integrates the recited abstract idea
into a practical application.
We now look to whether claim 1 adds a specific limitation beyond the
mathematical concepts that is not well-understood, routine, or conventional
in the field, or simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
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generality, to the mathematical concepts. 2019 Guidance, 84 Fed. Reg. 56-
57.
Although Appellant argues that the Examiner's determination that
elements of claim 1 are well-understood, routine, and conventional "are
[ u ]nsupported," Appellant's own Specification supports the Examiner's
position, as discussed below. Reply Br. 1-2 ( emphasis omitted).
As for the recitation in the preamble of claim 1 of "a method for
estimating a parameter of interest of an earth formation intersected by a
borehole," the Specification explains that "[h]istorically, flow rate analysis
has been used to determine parameters of interest such as formation
permeability and fluid mobility." Spec. ,r 2. And, also relevant to the
further recitation in claim 1 of "fluid sampled from the formation via a probe
contacting a wall of the borehole," the Specification indicates that "[t]ools
configured to extract formation fluids from the wall of a borehole are well
known. Generally, such tools include a fluid entry port which may be part of
a probe associated with a pad engageable to the wall of the borehole." Id.
Appellant's Specification thus indicates that methods for estimating a
parameter of interest of an earth formation intersected by a borehole, and
sampling fluid from a formation via a probe contacting a wall of borehole as
recited in claim 1, are well-understood, routine, and conventional activities
in the field. And the recitation in claim 1 of using a processor to conduct the
flow rate analysis simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the mathematical concepts.
Claim 1, therefore, does not add specific limitations beyond the
mathematical concepts that are not well-understood, routine, or conventional in
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the field, and simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the mathematical concepts. Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018).
Because claim 1 recites subject matter judicially excepted from patent
eligibility, does not integrate the judicially excepted subject matter into a
practical application, and simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicially excepted subject matter, we sustain the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.
Rejection II
Appellant presents arguments directed to independent claims 1, 14,
18, and 19, which Appellant argues together as a group. App. Br. 9-11.
Appellant also presents separate arguments directed to each of dependent
claims 10, 12, and 21. App. Br. 11-13. We accordingly select claim 1 as
representative, and decide the appeal as to claims 1-9, 11, and 13-18 based
on claim 1 alone, while separately addressing claims 10, 12, and 21. 37
C.F.R. § 4I.37(c)(l)(iv).
Claims 1-9, 11, and 13-18
Appellant does not dispute the Examiner's finding that Pop discloses a
method for estimating a parameter of interest of an earth formation
intersected by a borehole that comprises conducting a flow rate analysis on
fluid sampled from the formation via a probe contacting a wall of the
borehole. Compare Final Act. 10 (citing Pop ,r,r 3, 8, 54, 94, 125, 177;
claims 38 and 39; Figs. 1 lA and 12), with App. Br. 9-11. As for the
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limitation in claim 1 that the flow rate analysis comprises using a processor
to adjust a pressure measurement using a correction factor that compensates
for total compressibility, the Examiner finds that Pop discloses determining
refined measurement parameters based at least in part on total
compressibility, and applying the refined parameters as a correction factor to
achieve improved estimates of formation pressure. Final Act. 10-11 ( citing
Pop ,r,r 116-117); Ans. 4--5 (citing Pop ,r,r 96-108, 115, 116-117). The
Examiner finds that "Pop's use of the total compressibility itself as a
correction within a parameter, in calculations which improve the estimates
of the formation pressure, meets the claim limitation that 'the correction
factor compensates for total compressibility,"' regardless of "whether the
correction factor is taken to be the total compressibility itself, or whether the
correction factor is taken to be another quantity within the calculations,
which depends on the total compressibility." Ans. 5.
Appellant argues that the Examiner improperly "declines to use" the
definition of "total compressibility" set forth in the Specification. App. Br.
9. Appellant argues that "total compressibility" as defined in the
Specification refers to "compressibility of the fluid system modeled by
taking into account compressibilities and saturations of predominant fluids
in the tool-formation system along with the compressibility of the rock
matrix corresponding to the portion of the formation containing such fluids
and interacting with the sampling tool." App. Br. 10 (citing Spec. ,r 19).
Appellant argues that "Pop fails to disclose compressibility due to the rock
matrix." App. Br. 10.
Appellant's arguments, however, are unpersuasive of reversible error
in the Examiner's rejection, for reasons that follow.
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Pop discloses a method for estimating the formation pressure and
formation mobility of a subsurface formation penetrated by a wellbore that
includes both an investigation phase and a measurement phase. ,r,r 3, 8, 54.
Pop discloses conducting the investigation phase to determine initial
estimates of the formation pressure and formation mobility, and using the
initial estimates to design a measurement phase. ,r 60. More specifically,
Pop discloses calculating the volume extracted during the measurement
phase, and the phase's duration-referred to as the measurement phase
"pretest parameters"-using the formation pressure and mobility determined
in the investigation phase, along with certain pre-determined ( or "assigned")
parameters, which include "total compressibility." ,r,r 94, 96-103. Pop
discloses that total compressibility is "prescribed ... from knowledge of the
formation type and porosity through standard correlations." ,r 96. Pop also
discloses that total compressibility "may be obtained from known
correlations which in tum depend on lithology and porosity." ,r 116. Pop
discloses performing the measurement phase using the calculated pretest
parameters ( or "refined parameters") to "achieve improved estimates of the
formation pressure." ,r,r 117, 118, 120.
As discussed above, the Specification does not provide a limiting
definition of "total compressibility," but merely describes an optional way to
define the phrase. Spec. ,r 19. The fundamental problem with Appellant's
arguments is that even if the relied-upon description in the Specification
were taken as a limiting definition of "total compressibility," we find no
evidence on this appeal record that establishes any difference between "total
compressibility" so defined and "total compressibility" as disclosed in Pop.
Although Appellant argues that "Pop fails to disclose compressibility due to
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the rock matrix," Appellant does not identify any disclosure in Pop, or point
to any other evidence, indicating that "total compressibility" as described in
the reference-"prescribed ... from knowledge of the formation type and
porosity through standard correlations"----does not include or take into
account compressibility due to the rock matrix. App. Br. 9-10. Appellant's
conclusory assertion that "Pop fails to disclose compressibility due to the
rock matrix" amounts to unsupported attorney argument, which does not
constitute evidence necessary to resolve a disputed question of fact. In re
Schulze, 346 F .2d 600, 602 (CCP A 1965) ("Argument in the brief does not
take the place of evidence in the record.").
Appellant argues that Pop discloses using "total formation
compressibility" for "testing time estimation." App. Br. 10 ( citing Pop
,r 96). Appellant argues that, "[a]s evidenced in Pop, this 'total formation
compressibility' does not compensate for compressibility of the fluid system
including a compressibility of a rock matrix ... [ and] is not used to adjust a
pressure measurement." App. Br. 1 O; Reply Br. 2--4.
Appellant's arguments are again unpersuasive of reversible error. As
discussed above, Pop discloses obtaining initial estimates of formation
pressure and formation mobility in an investigation phase, and using these
estimates-along with a pre-determined or "assigned" total compressibility
value-to calculate the volume extracted during a subsequent measurement
phase and the measurement phase's duration ("pretest parameters"), to
obtain improved ( or adjusted) estimates of the formation pressure. Contrary
to Appellant's arguments, because Pop uses total compressibility to calculate
the pretest parameters used in the measurement phase to obtain improved
( adjusted) estimates of the formation pressure, the pretest parameters are
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analogous to correction factors that take into account, or compensate for,
total compressibility, as recited in claim 1. Furthermore, the pretest
parameters or "correction factors" are used to obtain improved----or
adjusted----estimates of the formation pressure, as also recited in claim 1.
Because we find no evidence on this appeal record that the "total
compressibility" disclosed in Pop does not include compressibility due to the
rock matrix ( as discussed above), Appellant's argument that the total
compressibility disclosed in Pop "does not compensate for compressibility
of the fluid system including a compressibility of a rock matrix," constitutes
unsupported attorney argument, which lacks persuasive merit.
We accordingly sustain the Examiner's rejection of claims 1-9, 11,
and 13-18 under 35 U.S.C. § 103.
Claim 10
Claim 10 depends from claim 1 and recites that the correction factor is
determined using both draw-down and build-up measurements.
Appellant asserts that Pop does not disclose or suggest determining a
correction factor using both draw-down and build-up measurements, but
instead discloses determining parameters of interest from draw-down and
build-up measurements. App. Br. 11. Appellant's conclusory assertions-
which are not supported by a citation to disclosures in Pop------do not identify
any specific error in the Examiner's factual findings or conclusion of
obviousness. Final Act. 14 (citing Pop ,r,r 13, 177); Ans. 20-21 (citing Pop
,r,r 116-117). Consequently, Appellant's arguments are unpersuasive of
reversible error in the Examiner's rejection of claim 10 under 35 U.S.C.
§ 103, which we accordingly sustain. Jung, 637 F.3d at 1365.
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Appeal2018-007747
Application 13/973,090
Claim 12
Although Appellant sets forth separate arguments for claim 12,
Appellant's arguments are not substantively distinct from the arguments
Appellant provides for claim 1. App. Br. 11-12. Because we are
unpersuaded of reversible error in the Examiner's rejection of claim 1 for the
reasons discussed above, Appellant's position as to claim 12 is also
unpersuasive of reversible error.
We accordingly sustain the Examiner's rejection of claim 12 under
35 U.S.C. § 103.
Claim 21
Appellant argues that claim 21 is patentable for the same reasons
Appellant provides for claim 1. App. Br. 13. Because we are unpersuaded
of reversible error in the Examiner's rejection of claim 1 for the reasons
discussed above, Appellant's position as to claim 21 is also unpersuasive of
reversible error.
We accordingly sustain the Examiner's rejection of claim 21 under
35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection claims 1-20 under 35 U.S.C.
§ 101 andrejectionsofclaims 1-21 under35U.S.C. § 103.
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).
AFFIRMED
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