Lu, Zhengang et al.

Patent Trials and Appeals Board

Aug 19, 2020

2019001057 (P.T.A.B. Aug. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/596,540 08/28/2012 Zhengang Lu IS11.0544-US-NP 3985
48879 7590 08/19/2020
SCHLUMBERGER INFORMATION SOLUTIONS
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
EXAMINER
SHAH, KAMINI S
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
SMarckesoni@slb.com
USDocketing@slb.com
jalverson@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHENGANG LU, ELENA VALOVA, and MARTIN CRICK
____________

Appeal 2019-001057
Application 13/596,540
Technology Center 2100
____________

Before LARRY J. HUME, CATHERINE SHIANG, and
JOHN D. HAMANN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4, 5, 7–15, and 23–28, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Schlumberger Technology Corporation as the real party
in interest. Appeal Br. 2.

Appeal 2019-001057
Application 13/596,540

2
STATEMENT OF THE CASE
Introduction
The present invention relates to well pad placement. See Title. In
particular,
[a] method can include assigning constraints associated
with an environment and generating rig or pad placement
options. Such constraints may account for physical factors of an
environment, physical factors of a rig or a pad, cost factors,
legal factors or other factors. A method can optionally output
specifications for a placement option, for example, to facilitate
building a rig or pad.
Spec. ¶ 3. Claim 1 is exemplary:
1. A method comprising:
assigning one or more constraints to a ground surface of
an environment;
assigning one or more constraints to a reservoir surface
of the environment wherein the reservoir surface represents a
reservoir of the environment as determined at least in part by
interpretation of seismic data acquired by sensors;
via a computing device, generating ground and reservoir
cost surfaces based at least in part on the assigned constraints of
the ground and reservoir surfaces;
defining a pad configuration and well configuration
parameters for at least one well that extends from a pad defined
at least in part by the pad configuration wherein the well
configuration parameters comprise a well head point to a well
heel point distance parameter and a well heel point to a well toe
point distance parameter that defines a length of a lateral
portion of a well;
via the computing device, based at least in part on the
cost surfaces, generating a model of pad locations that conform
to the defined pad configuration and the defined well
configuration parameters wherein lateral portions of wells
associated with the pad locations and defined by the well
configuration parameters maximize contact with the reservoir
represented by the reservoir surface; and
Appeal 2019-001057
Application 13/596,540

3
via the computing device, for at least one of the pads at a
corresponding one of the pad locations of the model, rendering
to a display a graphic of a plurality of well trajectories defined
at least in part by corresponding well head, well heel and well
toe points.

Rejections2
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 4, 5, 7–15, 23–28 101 Eligibility
1, 4, 5, 7–15, 23–28 112, first
paragraph
(pre-AIA)
Enablement

ANALYSIS
35 U.S.C. § 101
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in this case.
Section 101 of the Patent Act provides “[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.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS

2 Throughout this opinion, we refer to the (1) Final Office Action dated Nov.
13, 2017 (“Final Act.”); (2) Appeal Brief dated July 2, 2018 (“Appeal Br.”);
(3) Examiner’s Answer dated Sept. 17, 2018 (“Ans.”); and (4) Reply Brief
dated Nov. 19, 2018 (“Reply Br.”).
Appeal 2019-001057
Application 13/596,540

4
Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation
omitted).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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. Kappos, 561 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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.
(15 How.) 252, 267–68 (1854))); 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
Appeal 2019-001057
Application 13/596,540

5
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
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn 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.
In 2019, the United States Patent and Trademark Office published
revised guidance on the application of § 101. USPTO’s 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
Appeal 2019-001057
Application 13/596,540

6
2019) (“Guidance”).3 Under the Guidance, we first look to 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) (Step 2A, Prong 1); 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) (Step 2A, Prong 2).
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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). “Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.

3 The Guidance was updated in October 2019.
Appeal 2019-001057
Application 13/596,540

7
In this case, we agree with Appellant that the Examiner has not
complied with the Berkheimer requirement. See Appeal Br. 29–35; Reply
Br. 37–42. In particular, we agree with Appellant (Appeal Br. 29) that the
Examiner has not provided any of the four categories of evidence required
by the USPTO Memorandum, dated April 19, 2018, of Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (“Berkheimer
Memorandum”):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .
Berkheimer Memorandum at 3–4. Indeed, the Examiner acknowledges he
has not conducted the inquiry required by Berkheimer. See Ans. 7–8.
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner’s
rejection of claims 1, 4, 5, 7–15, and 23–28 on procedural grounds.4

4 In the event of further prosecution, we recommend the Examiner consider,
among other things, whether the claims are patent eligible under Step 2A,
Prong 2 of the Guidance: whether additional elements integrate the judicial
exception (such as mental processes) into a practical application.
Appeal 2019-001057
Application 13/596,540

8

Pre-AIA 35 U.S.C. § 112, first paragraph5
We have reviewed and considered Appellant’s arguments (Appeal
Br. 5–28; Reply Br. 2–29), but such arguments are unpersuasive of
Examiner error. To the extent consistent with our analysis below, we adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer.6
The Examiner asserts the claims fail to comply with the enablement
requirement with respect to the following claim limitation: “generating a
model of pad locations that conform to the defined pad configuration and the
defined well configuration parameters wherein lateral portions of wells
associated with the pad locations and defined by the well configuration
parameters maximize contact with the reservoir represented by the reservoir
surface.” See Ans. 5 (emphasis added).
The test of enablement is whether without undue experimentation, one
skilled in the art could make or use the invention from the disclosures
coupled with information known in the art. See In re Antor Media Corp.,
689 F.3d 1282, 1289 (Fed. Cir. 2012); U.S. v. Telectronics, Inc., 857 F.2d
778, 785 (Fed. Cir. 1988)..

5 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
6 Appellant argues the Examiner misinterprets certain terms (Reply Br. 7–
18; Reply Br. 6–8). However, as discussed in our analysis, such
arguments—regardless of whether they are valid—do not persuade us the
Examiner erred with respect to the enablement rejection.
Appeal 2019-001057
Application 13/596,540

9
Determining whether any necessary experimentation is undue
involves considering many relevant factors including, but not limited to:
(1) the breadth of the claims; (2) the nature of the invention; (3) the state of
the prior art; (4) the level of one of ordinary skill; (5) the level of
predictability in the art; (6) the amount of direction provided by the inventor;
(7) the existence of working examples; and (8) the quantity of
experimentation needed to make or use the invention based on the content of
the disclosure. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Not all
Wands factors need to be reviewed, for they are illustrative—not mandatory.
See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir.
1991).
In this case, the Examiner analyzed four Wands factors, and finds the
Specification does not provide any working example, and does not provide
direction to one skilled in the art and, therefore, fails under Wands factors
(6) and (7). See Final Act. 10; Ans. 5.
We agree with the Examiner. As pointed out by the Examiner, the
Specification references “maximize contact” (or “maximize reservoir
contact”) twice (below), but does not adequately explain how one skilled in
the art could “maximize contact with the reservoir represented by the
reservoir surface,” as recited in the claims (emphasis added).
As to “optimize ground cost” (see, e.g., 1430), as an
example, a pad placement process may perform a cost
minimization that will not remove pads, since a goal of the pad
placement process may be to maximize reservoir contact, but
rather will shift existing pad locations to reduce the total cost, if
possible. For example, within the same increment a pad may be
shifted from a ground location with a surface cost of 10 to a
location with a surface cost of 8. In such an example, a new pad
Appeal 2019-001057
Application 13/596,540

10
location after cost optimization may, for the same reservoir
coverage, demonstrate a lesser cost.

. . . As an example, a cost optimization process may be iterative
as moving a pad from one location to another may enable
additional movements for one or more pads nearby. As an
example, a module can determine whether an iteration results in
a lower cost, for example, such that if the module’s process is
stopped before it is complete, the module can output pad
locations that bear no higher cost than the pad locations without
the optimization. Such a process may be useful in
demonstrating cost sensitivity between two potential pad
locations. However, a first priority may be to maximize contact
with a reservoir surface (e.g., a lower surface); thus, cost
optimization may be applied as an adjustment to strategy-
generated points.
Spec. ¶¶ 79–80 (emphases added).
Appellant advances a number of arguments, but such arguments
are unpersuasive for the reasons discussed below.
First, instead of providing “an actual example . . . in the application”
(Appeal Br. 9), Appellant provides attorney arguments (Appeal Br. 13, 22;
Reply Br. 19–20), which are not objective evidence. See Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument of counsel cannot
take the place of evidence lacking in the record.”). Further, even
Appellant’s attorney arguments are vague and unhelpful. For example,
Appellant asserts the “pad locations can . . . be optimized to maximize
contact” (Appeal Br. 13) and the “instant application describes defining and
shifting pad locations to reduce cost while maximizing reservoir contact”
(Appeal Br. 22), but does not adequately explain how to maximize contact,
or even how much contact is needed to constitute “maximiz[ing] contact
with the reservoir,” as required by the claims.
Appeal 2019-001057
Application 13/596,540

11
Appellant then points to Figure 16 as a “result” of the maximizing
contact process. See Appeal Br. 13. But that statement is not supported by
the Specification, as the original Specification merely states “Fig. 16
illustrates an example of a graphical user interface for rendering information
associated with pad placement and restrictions” (Spec. ¶ 21). And the
amended Specification merely states “Fig. 16 illustrates an example of a
graphical user interface (GUI) 1600 for rendering information associated
with pad placement and restrictions, an example of a graphic 1650 and an
example of a graphic 1670” (Amended Spec. ¶ 21).7
Nor does the Declaration of Zhengang Lu dated August 3, 2017
(“Inventor Declaration”) support Appellant’s attorney argument about
Figure 16. To the contrary, that declaration merely states:
Fig. 16 shows a GUI 1600 that includes a 2D projected
representation of wells (e.g., projection along depth, z) and a
labeled well point 1610 along with a labeled boundary 1620.
Fig. 18 shows that the wells are within the boundary 1620.
Where the boundary 1620 represents a boundary of a reservoir,
as stated at p. 23-24, para. 0090, a well that is not within the
boundary would not contact the reservoir; whereas, a well
within the boundary may contact the reservoir depending on the
depth of the well (e.g., in z) and the depth of the reservoir (e.g.,
in z).
Inventor Declaration ¶ 14.
Second, Appellant points to “various GUIs” to “supplement the . . .
evidence.” Appeal Br. 19; see also Appeal Br. 17–22. However, none of
the cited GUIs demonstrates how one skilled in the art could “maximize

7 Even if Figure 16 is indeed the “result” of the maximizing contact process
(Appeal Br. 13), that result itself does not teach one skilled in the art how to
maximize contact.
Appeal 2019-001057
Application 13/596,540

12
contact with the reservoir represented by the reservoir surface,” as recited in
the claims (emphasis added). Instead, as acknowledged by Appellant
(Appeal Br. 21; Reply Br. 23–24, 27–28), the Specification describes an
example of “optimiz[ing] ground cost,” which does not address how to
maximize contact. Appellant also asserts “the term ‘cost’ appears 99 times
in the instant application” (Reply Br. 27), but does not adequately explain
why such appearances solve the disputed enablement issue.
Third, Appellant argues as to the “the level of predictability in
the art” of the Wands factor, “[t]he subject matter claimed is in the
computer science and the geological arts, including oilfield
development and production. Predictability to those skilled in these
arts weighs in favor of Appellant.” Appeal Br. 6. But Appellant’s
conclusion is speculative and unsubstantiated, as it is not supported by
adequate reasoning or evidence.
Fourth, Appellant cites the Inventor Declaration extensively
(Appeal Br. 22–27; Reply Br. 5–6), but the Federal Circuit has
declared “[t]he testimony of an inventor often is a self-serving, after-
the-fact attempt.” Bell & Howell Document Mgmt. Prods. Co. v. Altek
Sys., 132 F.3d 701, 706 (Fed. Cir. 1997).
Further, the Inventor Declaration explains “reservoir contact” is
a term of art and can be modeled (Inventor Declaration ¶¶ 4, 10, 13),
but does not state one skilled in the art would know how to “maximize
reservoir contact.” Nor does the Inventor Declaration point to any
working example from the Specification on how to “maximize
reservoir contact.”
Appeal 2019-001057
Application 13/596,540

13
Instead, the Inventor Declaration cites three exhibits, but none
of the exhibits supports Appellant’s position. Exhibit A is a press
release that mentions “maximizing the amount of reservoir rock in
contact with the well” (Inventor Declaration ¶¶ 5, 7), but does not
address the enablement issue. Exhibit B is a brochure that mentions
“maximum reservoir contact” (Inventor Declaration ¶¶ 6–7), but does
not explain how the Specification provides direction to one skilled in
the art as to how to make the invention. Exhibit C is a case study
dealing with “increas[ing] reservoir contact” (Inventor Declaration
¶¶ 8–9)—not “maximiz[ing]” contact, as required by the claims—and
does not explain how the Specification provides direction to one
skilled in the art as to how to make the invention.
In short, the Inventor Declaration fails to provide adequate
support for Appellant’s enablement arguments.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1, 4, 5, 7–15, and 23–28 under
pre-AIA 35 U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1, 4, 5, 7–15, and
23–28 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1, 4, 5, 7–15, and
23–28 under pre-AIA 35 U.S.C. § 112, first paragraph.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1,
4, 5, 7–15, and 23–28. See 37 C.F.R. § 41.50(a)(1).
Appeal 2019-001057
Application 13/596,540

14

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7–
15, 23–28
101 Eligibility 1, 4, 5, 7–
15, 23–28
1, 4, 5, 7–
15, 23–28
112, first
paragraph
(pre-AIA)
Enablement 1, 4, 5, 7–
15, 23–28

Overall
Outcome
1, 4, 5, 7–
15, 23–28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED