Ex Parte Yeager

Patent Trials and Appeals Board

May 8, 2019

13552464 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/552,464 07/18/2012 Justin Yeager
72382 7590 05/08/2019
THE WENDT FIRM, P.C.
P.O. Box 133035
THE WOODLANDS, TX 77393
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.
160-POOlUS 5721
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
05/08/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN YEAGER1
Appeal2018-003935
Application 13/552,464
Technology Center 3600
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and JASON J.
CHUNG, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 6 through 10, 25, 31, and 32. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, Atlas Planning Solutions LLC is the real party in
interest. App. Br. 3.
Appeal2018-003935
Application 13/552,464
INVENTION
The invention is directed to a technique for use in planning projects
which identifies potential simultaneous operational conflicts among a
plurality of assets in a project. Abstract. Claim 1 is illustrative of the
invention and is reproduced below.
1. A method of enabling critical path method planning and
scheduling software to perform resource constrained horizontal
well drilling and hydraulic fracturing project planning and
scheduling, the method comprising:
a) storing horizontal well drilling and hydraulic
fracturing operational scheduling data for a horizontal well
drilling and hydraulic fracturing project, the project having one
or more horizontal well drilling and hydraulic fracturing project
assets, the horizontal well drilling and hydraulic fracturing
project assets able to perform a plurality of horizontal well
drilling and hydraulic fracturing operational activities at defined
horizontal well drilling and hydraulic fracturing coordinates, in
a horizontal well drilling and hydraulic fracturing scheduling
database
b) storing project-specific variables for the horizontal
well drilling and hydraulic fracturing project in an external data
source;
c) executing a database query of the horizontal well
drilling and hydraulic fracturing scheduling database and the
external data source using a computer, returning all possible
combinations of the plurality of horizontal well drilling and
hydraulic fracturing operational activities, including:
i) defining a common reference;
ii) calculating distances from each defined
horizontal well drilling and hydraulic fracturing
coordinate to each other horizontal well drilling and
hydraulic fracturing defined coordinate;
iii) filtering the calculated distances to filter out
potential horizontal well drilling and hydraulic fracturing
operational activity conflicts selected from the group
consisting of one or more user defined distances,
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Application 13/552,464
horizontal well drilling and hydraulic fracturing
operational activities having no time conflicts, and
distances greater than one or more user-defined buffer
distances between horizontal well drilling and hydraulic
fracturing assets;
d) identifying potential simultaneous horizontal well
drilling and hydraulic fracturing operational activity conflicts
displayed on a user interface in tabular output format, the user
interface electronically connected to the computer;
e) associating the hydraulic fracturing operational
activity with a latest horizontal well drilling finish date
identified from step ( d) for each horizontal well pad of the
project, and assigning the latest horizontal well drilling finish
date as "SIMOPS Constraint Date" for the hydraulic fracturing;
f) determining from among the project-specific variables
and the SIMOPS Constraint Date an activity occurring latest in
time, and assigning this as "Frac Constraint Date";
g) performing critical path method planning and
scheduling of the horizontal well drilling and hydraulic
fracturing project using the Frac Constraint Date and critical
path method planning and scheduling software running on the
computer, thus enabling the critical path method planning and
scheduling software to perform resource constrained critical
path method planning and scheduling of the horizontal well
drilling and hydraulic fracturing project.
EXAMINER'S REJECTI0N2
The Examiner rejected claims 1, 6 through 10, 25, 31, and 32 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 2-6.
2 Throughout this Decision we refer to the Appeal Brief filed September 18,
2017 ("App. Br."); the Reply Brief filed February 28, 2018 ("Reply Br.");
Final Office Action mailed March 9, 2017 ("Final Act."); and the
Examiner's Answer mailed January 31, 2018 ("Ans.").
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Application 13/552,464
ANALYSIS
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellant's
arguments. Appellant's arguments have persuaded us of error in the
Examiner's rejection of claims 1, 6 through 10, 25, 31, and 32 under
35 U.S.C. § 101.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank
Int'!, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In
accordance with that framework, we first determine what concept the claim
is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561
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U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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Application 13/552,464
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The United States Patent and Trademark Office "USPTO" recently
published revised guidance on the application of§ 101. USPTO's 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Memorandum"). Under that guidance, we first determine
whether the claim recites:
( 1) any judicial exceptions, including certain groupings 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 MANUAL OF PATENT EXAMINING PROCEDURE
("MPEP") § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
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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.
See Memorandum.
ANALYSIS
The Examiner determines the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 2--4. Specifically, the Examiner determines the claims are directed to
an abstract idea stating:
This is simply the recited storing, executing, defining,
calculating, filtering, identifying, associating, determining, and
performing data which can be performed mentally or in a
computer and is similar to the kind of 'organizing human
activity' and is an idea of itself. It is similar to other concepts
that have been identified as abstract by the courts, such as
Collecting information, analyzing it, and displaying certain
results of the collection and analysis in Electric Power Group.
Therefore, the claims are directed to an abstract idea.
Ans. 3.
Appellant argues the Examiner's analysis
that the method "is simply the recited storing, executing,
defining, calculating, filtering, identifying, associating,
determining, and performing data which can be performed
mentally or in a computer and is similar to the kind of
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Application 13/552,464
'organizing human activity' and is an idea of itself'
mischaracterizes the claims and unfairly deprives them of their
concrete distinctiveness.
App. Br. 14. Appellant argues that the claim is directed to determining a
SIMO PS (Simultaneous Operations) constraint date for a project and, thus,
allowing the computer to perform resource constrained critical path planning
and scheduling for the project. App. Br. 15.
Appellant's arguments have persuaded us of error in the Examiner's
rejection of independent claims 1, 25, 31, and 32 under 35 U.S.C. § 101. As
discussed above, the USPTO has published recently revised guidance for the
application of§ 101 and under that guidance we first determine whether the
claims recite a judicial exception including certain abstract ideas. Here the
Examiner has found that the claims recite two groupings of abstract ideas,
organizing human activity and mental processes, analogizing Appellant's
claims to the claims at issue in Electric Power Group, LLC. v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). Ans. 3; Final Act. 3. The revised guidance
identifies as abstract certain methods of organizing human activity,
specifically: fundamental economic principles or practices (including
hedging, insurance, mitigating risk), commercial or legal interactions
(including contracts, legal obligations, advertising, marketing or sales
activities or behaviors, business relations), and managing personal behavior
or relationships or interactions between people. Further, the revised
guidance identifies mental processes as concepts performed in the human
mind (including observations, evaluations, judgments, and opinions).
Independent claim 31 recites implementing a method of critical path
planning and scheduling, which involves: storing, in a database, scheduling
data for horizontal well drilling and hydraulic fracturing operations having
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assets to perform the operations; executing a database query to return all
activities including calculated distances from each horizontal well drilling
and hydraulic fracturing coordinate to each other horizontal well drilling and
hydraulic fracturing coordinate; and filtering the distances to filter out
conflicts; identifying the potential conflicts; associating a finish date for
each of the conflicts and assigning the latest well drilling finish date as the
SIMOPS constraint date; determining a frac constraint date from the
SIMOPS constraint date and project specific variables; and performing
critical path planning and scheduling. Independent claims 1, 25, and 32
recite similar limitations.
We disagree with the Examiner's conclusions that the claims recite
organizing human activities as we do not see that the limitations discussed
above in the independent claims recite fundamental economic principles or
practices, commercial or legal interactions, or managing personal behaviors
or relationships or interactions between people. Similarly, we do not
conclude that the claimed steps are mental processes as concepts performed
in the human mind ( observations, evaluations, judgments and opinions).
Further, while the claims broadly recite collecting and analyzing
information, which our reviewing court in reviewing certain claims before it
identified as essentially a mental process, we do not consider the claims to
be directed to merely analyzing information in a manner that people can go
through in their minds. Electric Power, 830 F.3d at 1353. As discussed
above, the claims recite calculating distances between each well drilling and
hydraulic fracturing operations; and identifying conflicts and filtering out the
conflicts, which the Examiner has not shown nor do we conclude, are steps
which people can go through in their mind. Thus, we disagree with the
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Examiner's determination the claims recite an abstract concept.
Furthermore, even if claims were considered to recite an abstract
concept, we agree with Appellant's arguments that the claims are directed to
an improvement to a specific technology, and as such the claims integrate
the abstract concept to a practical application and recite significantly more
than the abstract concept. Appellant argues that the claims are not directed
to an improvement to the functioning of the computer itself, but rather
improve another technological field in that they improve the process of
hydrocarbon well drilling and completion. App. Br. 22, Reply Br. 9-10.
The Examiner responds to Appellant's arguments by stating the steps of
critical path method planning do not amount to significantly more than the
abstract idea. Ans. 5. The Examiner reasons the limitations
do not provide the improvements to the functioning of
computer itself, the steps are still performed in generic
computer. Looking at the limitations as an ordered combination
adds noting that is not already present when looking at the
elements taken individually. There is no indication that the
combination of elements improves the functioning of a
computer/computer networks themselves. Their collective
functions merely provide conventional computer
implementation. Therefore, the claims do not recite
improvements to another technology or technical field,
improvements to the functioning of the computer itself.
Ans. 5. While we concur with the Examiner that the claims do not improve
the operation of the computer itself, as admitted by Appellant, on page 22 of
the Appeal brief, the Examiner has not addressed the Appellant's assertion
that the claims are directed to improving another technology. We concur
with the Appellant that the claimed method involves planning of horizontal
well drilling and hydraulic fracturing and, according to Appellant's
specification, improves the process by determining conflicts, simultaneous
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constraint dates, and a frac constraint date ( or project constraint date). Thus,
the claims recite significantly more than the abstract idea and integrate the
abstract idea into a practical application, as they improve the technology of
planning of horizontal well drilling and hydraulic fracturing. Accordingly,
we do not sustain the Examiner's rejection of independent claims 1, 25, 31,
and 32 and dependent claims 6 through 10 under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter.
DECISION
We reverse the Examiner's rejection of claims 1, 6 through 10, 25, 31,
and 32 under 35 U.S.C. § 101.
REVERSED
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