Matthew Casey

Patent Trials and Appeals Board

Sep 2, 2020

2019006181 (P.T.A.B. Sep. 2, 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.
14/461,193 08/15/2014 Matthew S. Casey 2013EM308 9610
34477 7590 09/02/2020
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW S. CASEY
Appeal 2019-006181
Application 14/461,193
Technology Center 2800
Before CATHERINE Q. TIMM, JEFFREY S. SMITH, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 under 35 U.S.C. § 101 as patent-
ineligible. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ExxonMobil
Upstream Research Company, a wholly owned subsidiary of Exxon Mobil
Corporation. Appeal Br. 4. Related entities include ExxonMobil Chemical
Company, an unincorporated division of Exxon Mobil Corporation;
ExxonMobil Chemical Patents Inc., a wholly owned subsidiary of
Exxon Mobil Corporation; and ExxonMobil Research and Engineering
Company, a wholly owned subsidiary of Exxon Mobil Corporation. Id.
Appeal 2019-006181
Application 14/461,193
2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to methods of modeling subsurface
reservoirs for use in the field of geophysical prospecting. Spec. ¶¶ 2–3.
Appellant’s method integrates well log data and seismic data into a single
subsurface reservoir model. See, e.g., claims 1 and 14; Spec. ¶ 2.
According to the Specification, most methods of modeling reservoirs
are limited to a certain subset of scales or are stationary. Spec. ¶ 3. The
stationary methods allow only global specification of the frequency content.
Spec. ¶ 13. But non-stationary, multi-scale transforms allow a modeler to
incorporate a given frequency of variation at a particular location in space,
or in the model. Id. Non-stationary multi-scale transforms use higher domain
order (order > 1) joint representations of data. Spec. ¶ 11.
Appellant’s method uses a non-stationary, multi-scale transform to
combine multiple data sources into one coherent reservoir model. Spec. ¶ 14.
Examples of these non-stationary multi-scale transforms include wavelet
transforms (Debauchies 1992), ridgelets (Candes 1998), curvelet transforms
(Candes and Donoho 2004), and second generation wavelets and lifting
schemes (Sweldens 1998). Spec. ¶ 15. A method for processing data with
these representations can take the form of an equation, an algorithm, or a
heuristic. Id.
Appellant uses the non-stationary, multi-scale transform to transform
the data of two models: (1) a subsurface model and (2) a reservoir property
model (e.g., a geostatistical forward model). Spec. ¶¶ 9, 14. Processing
occurs to combine the transformed data of the two models into a joint
Appeal 2019-006181
Application 14/461,193
3
domain model and this joint domain model is then inverse transformed to
obtain a reservoir model in space domain. Spec. ¶¶ 9, 14–16.
Claim 1 is illustrative of Appellant’s method and is reproduced below
with references to disclosures in the Specification and Figures:
1. A method for integrating well log and seismic data into
a single subsurface reservoir model, comprising:
(a) obtaining seismic data and well log data from a
subsurface region;
(b) inverting the seismic data and applying a
petrophysical transformation to generate a subsurface model of
a reservoir property [Fig. 7: step 71; see also Figs. 8 and 10:
step 2 (acoustic/elastic impedance inversion) and step 3
(petrophysical transformation)];
(c) generating a reservoir property model of the reservoir
property using the well log data [Fig. 7: step 72 (geostatistical
simulation); see also Spec. ¶ 9 and Figs. 8 and 10 (geostatistical
forward model)];
(d) transforming the subsurface model and the reservoir
property model to a joint domain, of order greater than (>) 1
[Spec. ¶ 11 (“Non-stationary multi-scale transforms use higher
domain order (order > 1) joint representations of data” such as a
“joint representation of ‘scale’ and ‘space’”); Spec. ¶ 15
(examples of Wavelet transform (Debauchies 1992), Ridgelets
(Candes 1998), Curvelet transform (Candes and Donoho 2004),
Second generation wavelets and Lifting schemes (Sweldens
1998); and Claims 2–3];
(e) processing the transformed subsurface model and the
transformed reservoir property model in the joint domain to
coherently combine the transformed subsurface model and the
transformed reservoir property model into a joint domain model
[Fig. 7: step 73 (information processing theory); Spec. ¶¶ 18–22
(describing heuristic method and convex combination with
spatially co-located weighting coefficients); and Claims 4–6];
and
Appeal 2019-006181
Application 14/461,193
4
(f) inverse transforming the joint domain model to obtain
a reservoir model in space domain [step 74 in Fig. 7; inverse
wavelet transform in Figs. 8 and 10];
wherein (b)–(f) are performed using a computer.
Appeal Br. 15 (Claims Appendix).

OPINION
According to the framework set forth by the Supreme Court,
evaluating patent eligibility under 35 U.S.C. § 101 involves two steps: “we
first determine whether the claims at issue are directed to a patent-ineligible
concept” and, “[i]f so, we then ‘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.’” Packet
Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1307 (Fed. Cir.
2020) (quoting Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217, 221
(2014).
The USPTO has issued guidelines for applying the two-step
framework of Alice. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 PEG”), which was updated
on October 17, 2019. See October 2019 Patent Eligibility Guidance Update,
available at uspto.gov/PatentEligibility (“October 2019 PEG Update”).
Under the 2019 PEG framework, we look to see whether the claim
recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
Appeal 2019-006181
Application 14/461,193
5
interactions, or mental processes) (designated as Step 2A (Prong One) in the
2019 PEG); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (designated as
Step 2A (Prong Two)).
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 see
whether the claim provides an inventive concept (designated Step 2B).
After considering Appellant’s claims under the Alice framework using
the 2019 PEG and October 2019 PEG Update as a guide, we determine that
Appellant has not identified a reversible error in the Examiner’s conclusion
that Appellant’s claims are ineligible for a patent under 35 U.S.C. § 101.
We determine, like the Examiner did, that the claims recite
mathematical concepts in accordance with the guidelines of Step 2A, Prong
One. Indeed, there is no question that some of the elements of the claims are
based on mathematical concepts. Compare Final Act. 2, and Ans. 5–6, with
Appeal Br. 6–11, and Reply Br. 4. Mathematical concepts include
mathematical relations and mathematical calculations. 2019 PEG, at 52. The
Examiner determines that the entirety of steps (b) though (f) of claim 1 are
based on mathematical relationships. Final Act. 2. Appellant acknowledges
that step (d) is based on mathematical concepts. Reply Br. 4. But Appellant
contends that the claims “do not directly recite such mathematical concept.”
Reply Br. 4. The implication of Appellant’s argument is that the claims are
eligible at Step 2A, Prong One. We disagree for the following reasons.
The claims recite mathematical relationships and, thus, fall within the
“mathematical concepts” judicial exception of Prong One. Inverting data,
applying transformations, and generating models from data are methods of
Appeal 2019-006181
Application 14/461,193
6
converting data from one form to another using calculations within
mathematical algorithms. Also, the processing of step (e) is a processing of
model data using mathematical relationships and calculations. That steps (b)
through (f) are steps of computing using mathematical relationships is clear
from the Specification. See Spec. ¶ 17 (“The present inventive method also
includes the use of fast versions of these algorithms. The fast versions use
computational methods to compute the equivalent results of the transforms
with some efficient computational method.”). Because the claims recite
mathematical relationships and calculations, they recite abstract ideas under
Step 2A, Prong One.
We agree with the Examiner that claim 1 recites judicial exceptions,
i.e., abstract ideas, in the form of mathematical concepts and thus, we move
to Step 2A, Prong Two to evaluate whether the mathematical concepts are
integrated into a practical application. A claim that integrates the recited
judicial exception into a practical application is patent-eligible.
We agree with the Examiner that claim 1 does not integrate the
mathematical concepts of steps (b) through (f) into a practical application.
Ans. 6–7. To evaluate whether the mathematical concepts are integrated into
a practical application, we: (a) identify whether there are any additional
elements recited in the claim beyond the judicial exception(s); and (b)
evaluate those additional elements individually and in combination to
determine whether they integrate the exception into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit. 2019 PEG, at 54–55.
As pointed out by the Examiner, the only elements of claim 1 that do
not recite a mathematical concept are step (a), the step of obtaining seismic
Appeal 2019-006181
Application 14/461,193
7
data and well log data from a subsurface region, and the recitation of
performing steps (b) through (f) on a computer. Final Act. 2.
Neither of the additional elements individually or in combination
integrate the mathematical concepts into a practical application. Step (a) is
merely a data gathering step and is insignificant extra-solution activity.
“[I]nsignificant post-solution activity will not transform an unpatentable
principle into a patentable process.” Diamond v. Diehr, 450 U.S. 175, 191–
92 (1981); MPEP § 2106.05(g). As to the recitation of performing the steps
on a computer, such generic computer implementation is not sufficient to
transform an abstract idea into a patent eligible process. Alice, 573 U.S. at
223–24 (“wholly generic computer implementation is not generally the sort
of ‘additional featur[e]’ that provides any ‘practical assurance that the
process is more than a drafting effort designed to monopolize the [abstract
idea] itself’” (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77 (2012)). Appellant’s claims take seismic data and well log
data and convert that information into another type of data (joint domain
model) using a computer as a tool to facilitate the calculations. A process
that starts with data, applies an algorithm, and ends with a new form of data
is directed to an abstract idea. Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
Appellant contends that the claims use a combined order of specific
rules analogously to the claims determined to be eligible in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal
Br. 9. But the claims here are different that those of McRO. As explained in
SAP, “[t]he claims in McRO were directed to the creation of something
physical—namely, the display of ‘lip synchronization and facial
expressions’ of animated characters on screens for viewing by human eyes.”
Appeal 2019-006181
Application 14/461,193
8
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167–68 (Fed. Cir. 2018).
Appellant’s claims do not recite any step of creating something physical. A
model is not a physical entity in and of itself. Although a lack of physical
transformation alone is not enough to preclude eligibility, the lack of a
physical transformation is a clue that the claims are directed to the abstract
idea—the mathematical relationships—and do not apply, rely on, or use the
mathematical relationships in a manner that imposes a meaningful limit on
the abstract idea.
McRO’s claim differ from the present claims in another way. McRO’s
claims recite “obtaining a first set of rules that define output morph weight
set stream as a function of phoneme sequence and time of said phoneme
sequence.” McRO, 837 F.3d at 1307–08. Appellant does not point out which
of their claim steps articulate similar rules. A reading of the claims and
Specification provide evidence that Steps (b) through (f) are steps of
transforming data from one form to another and are not rules-based in the
same manner as the rule set of McRO. See Spec. ¶ 17 (referring to
“computational methods.”).
Appellant contends the method of the claims overcomes the
difficulties with prior techniques to provide improved integration of the
seismic and well log data into a single reservoir model. Reply Br. 6. But the
improved integration of data is an improvement in the judicial exception
itself, i.e., in the mathematical functions. The computer is used as a tool to
perform the math. Thus, the improvement is in the math and not in the
functioning of the computer or other technology.
It is true that “software-based innovations can make ‘non-abstract
improvements to computer technology’ and be deemed patent-eligible
subject matter” under Alice’s step 1 “directed to” analysis. Finjan, Inc. v.
Appeal 2019-006181
Application 14/461,193
9
Blue Coat Sys., Inc., 879 F.3d 1299, 1304 (Fed. Cir. 2018) (quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)). But
better calculations are not enough. See Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he
fact that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”).
Because claim 1 does not integrate the mathematical concepts of steps
(b) through (f) into a practical application, we move to Step 2B. In Step 2B,
we evaluate whether the claim provides an inventive concept, i.e., whether
the additional elements amount to significantly more than the exception
itself. 2019 PEG, at 56.
The Examiner determines that claim 1 does not recite additional
elements that amount to significantly more than the judicial exception
because the data gathering of step (a) is extra solution activity and the
computer is recited at a high-level of generality and is performing the
generic function of processing data. As stated by the Examiner, “[m]ere
instructions to apply an exception using a generic computer does not provide
an inventive concept.” Appellant does not question these determinations nor
question the Examiner’s Step 2B evaluation. Reply Br. 3–7. All of
Appellant’s arguments focus on the Step 2A analysis. Id.
Thus, Appellant has not identified a reversible error in the Examiner’s
determination that claim 1 is patent ineligible. Claims 2–14 further limit the
transforming of step (d), processing of step (e), and the joint domain order of
the representation of data. In other words, the other claims merely further
limit the abstract mathematical concepts recited in claim 1. As such, for the
Appeal 2019-006181
Application 14/461,193
10
same reasons we discuss above, the further limitations do not transform
claims 2–14 into patent-eligible claims.
CONCLUSION
The Examiner’s decision to reject claims 1–14 is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14 101 Eligibility 1–14

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