BAKER HUGHES INCORPORATED

Patent Trials and Appeals Board

Feb 2, 2022

2020006507 (P.T.A.B. Feb. 2, 2022)

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. 15/081,434 03/25/2016 Babak Kouchmeshky 751777.000057 7560 132858 7590 02/02/2022 Hogan Lovells US LLP 609 Main Street Suite 4200 Houston, TX 77002 EXAMINER KIM, EUNHEE ART UNIT PAPER NUMBER 2146 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): hlusdocketing@hoganlovells.com stephanie.mcdonough@hoganlovells.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BABAK KOUCHMESHKY and RASHID W. KHOKHAR ____________ Appeal 2020-006507 Application 15/081,434 Technology Center 2100 ____________ Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and AMEE A. SHAH, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-4, 6, 8, 9, 11-19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 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 Baker Hughes Company. (Appeal Br. 1.) Appeal 2020-006507 Application 15/081,434 2 THE INVENTION Appellant claims a method for estimating parameters of Archie’s Law and formation texture information of dielectric measurements of an earth formation. (Spec. ¶ 1, Title.) Claim 1 is representative of the subject matter on appeal. 1. A method for evaluating an earth formation having an effective conductivity characterized by Archie’s law using complex dielectric measurements, wherein the complex dielectric measurements are modeled using a mixing model approximating the dielectric behavior of the formation, the method comprising: obtaining dielectric measurements at a plurality of frequencies in the earth formation; generating a numerical model comprising an expression equating a representation for the effective conductivity under Archie’s law with respect to direct current with a function for the effective conductivity representative of the mixing model with respect to direct current, wherein the representation comprises an Archie equation comprising a plurality of unknown Archie parameters; solving a system of equations to obtain values for the Archie parameters, the system of equations comprising at least: i) the expression; ii) a second expression equating a first order variation of the representation with a first order variation of the function with respect to water saturation of the formation (Sw); and iii) a third expression equating a first order variation of the representation with a first order variation of the function with respect to porosity of the formation (φ); and wherein solving the system of equations comprises fitting the mixing model to the dielectric measurements at the plurality of frequencies to estimate values for salinity of the water of the formation, water saturation of the formation (Sw), and permittivity of the rock matrix of the formation; Appeal 2020-006507 Application 15/081,434 3 using the values for the Archie parameters to estimate a parameter value for at least one parameter of interest comprising at least one of i) the conductivity of a volume of interest of the formation for direct current (DC), and ii) the resistivity of a volume of interest of the formation for DC; modeling the earth formation by associating the estimated parameter value for the at least one parameter of interest with the volume of interest in an other model of the earth formation stored as information on a non-transitory machine-readable medium; and rendering the other model of the earth formation on a display. Appeal Br. 12-13 (Claims App.). THE REJECTIONS Claim 14 is rejected under 35 U.S.C. § 112(b) as being indefinite. Claims 1-4, 6, 8, 9, and 11-19 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS 35 U.S.C. § 112(b) REJECTION Appellant The Examiner rejected claims 7 and 14 under 35 U.S.C. §112(b). (Final Act. 2). Claim 7 has been canceled. Appellant has not responded to this rejection in the Appeal Brief. Therefore, we summarily sustain this rejection. 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1-4, 6, 8, 9, and 11-19 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that Appeal 2020-006507 Application 15/081,434 4 claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a Appeal 2020-006507 Application 15/081,434 5 judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims recite generating a numerical model comprising a mathematical expression and solving a system of equations which is a mathematical calculation using mathematical equations. (Final Act. 3). The Examiner finds the judicial exception is not integrated into a practical application and does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The Specification discloses that the present disclosure is related to a method for evaluating an earth formation having an effective conductivity characterized by Archie’s Law. (Spec. ¶ 5.) The method includes the step of generating a numerical model comprising an expression equating a representation for the effective conductivity under Archie’s law with respect to direct current with a function for the effective conductivity representative of the mixing model with respect to direct current and solving a system of equations to obtain values for the Archie parameters. (Spec. ¶ 26.) Consistent with this disclosure, claim 1 recites “generating a numerical model comprising an expression equating a representation for the effective conductivity under Archie’s law,” and “solving a system of equations to obtain values for the Archie parameters.” We thus agree with the Examiner’s determination that the claim 1 is directed to generating a numerical model comprising a mathematical expression and solving a system of equations which is a mathematical calculation using mathematical equations and mathematical calculations. Appeal 2020-006507 Application 15/081,434 6 Turning to the second prong of the “directed to test,” claim 1 requires a “non-transitory machine-readable medium” and a “display.” These recitation of do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification, nor does Appellant directs us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitations do not effect an improvement in the functioning of the non-transitory machine-readable medium, the display or other technology, do not recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a Appeal 2020-006507 Application 15/081,434 7 different state or thing. Id. Claim 1 recites a judicial exception that is not integrated into a practical application and thus claim 1 is directed to an “abstract idea.” Turning to the second step of the Alice analysis, because we find that claim 1 is directed to an abstract idea, the claim must include an “inventive concept” in order to be patent-eligible, i.e., there must be “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.’” See Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73). The introduction of a computer elements into the claim does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, 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.” Appeal 2020-006507 Application 15/081,434 8 Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether claim 1 here does more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the functions performed by the computer elements is purely conventional. Using a computer element to obtain data, generate and solve equations, store, retrieve, select, and apply decision criteria to data and modify the data and display data as a result amounts to electronic data query, retrieval, and display-one of the most basic functions of a computer. All of these computer functions are well- understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer elements of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be Appeal 2020-006507 Application 15/081,434 9 abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 1 does not, for example, purport to improve the functioning of the medium or the display. As we stated above, the claim does not affect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied to practice the invention. (See, e.g., Spec. ¶¶ 98, 109-110.) Thus, claim 1 at issue amounts to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 5-11; Reply Br. 2-8) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of the same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims do not recite a mental process or a Appeal 2020-006507 Application 15/081,434 10 certain method of organizing human activity because the Examiner did not determine that the claims recite a mental process or a certain method of organizing human activity. (Appeal Br. 6.) We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims do not recite a mathematical algorithm or formula and that the claims do not recite calculations. (Appeal Br. 5; Reply Br. 4.) We do not understand this argument since the Specification describes the invention as a method for generating a numerical model. In addition, the body of claim 1 is full of mathematical calculation steps. In this regard, claim 1 recites, for example, “solving a system of equations to obtain values for the Archie parameters.” The Specification discloses that this step involves a great deal of mathematical calculations. (Spec. ¶¶ 65-83.) As such, claim 1 recites mathematical calculations and thus recites the judicial exception of a mathematical concept. We are not persuaded of error on the part of the Examiner by Appellant’s argument that since the instant invention uses modeling to determine where to drill for oil and gas deposits, it falls under the long- standing doctrine of In re Abele, 684 F.2d 902 (CCPA 1982), that displaying (e.g., rendering) a physical property of a physical object is not an abstract idea. (Appeal Br. 8.) However, claim 1 of the instant application is distinguishable from the invention of Abele because Abele’s claimed invention “[was] directed to an improvement in computed tomography whereby the exposure to X-ray is reduced while the reliability of the produced image is improved.” Abele, 684 F.2d at 903. Appellant’s invention does not recite an improvement in a physical test, itself, or an improvement in the visual display of the test results. In addition, Appellant’s claim 1 does Appeal 2020-006507 Application 15/081,434 11 not recite using the modeling to determine where and how to drill for oil or gas deposits. Instead, Appellant’s invention is a method to generate a numerical model and to solve equations, which is a mathematical concept. We are not persuaded of error on the part of the Examiner by Appellant’s arguments that (1) the method of the instant invention recites an improved estimation of Archie parameters, (2) increases the accuracy of the resistivity model of earth formation and (3) the steps in the claim are not conventional. (Appeal Br. 10; Reply Br. 6.) We agree with the Examiner’s response to this argument found on pages 11 to 13 of the Answer and adopt the same as our own. In this regard, we agree that the present invention is a mathematical calculation that does not require specialized computer hardware or provide any improvement to computer functioning. We note that the improvements touted by Appellant, i.e., improvement in estimation of the Archie parameters, is an improvement to the abstract idea of generating a numerical model comprising a mathematical expression and solving a system of equations. As such, Appellant’s arguments rely on the ineligible concept itself to establish that the claims recite an inventive concept. But “[i]t has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Moreover, “[n]o matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP Am., Inc., 898 F.3d at 1163; see also id. at 1168. We find untimely Appellant’s argument in the Reply Brief that the Appeal 2020-006507 Application 15/081,434 12 claims are directed to a transformation of data that represents a physical object and thus integrates the recited exception into a practical application. (Reply Br. 5.) We note that this new argument was raised by Appellant for the first time in the Reply Brief, and is not in response to a new issue brought up by the Examiner in the Answer. Appellant is reminded that: [T]he purpose of a reply brief is to ensure the Appellant the opportunity to have the last word on an issue raised by the Examiner. The reply brief enables the Appellant to address any new grounds of rejection the Examiner may have raised in the answer, or to address changes or developments in the law that may have occurred after the principal brief was filed. The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not. Giving cognizance to belated arguments in a reply would vitiate the force of the requirement in Board Rule 37(c)(1)(vii) that “[a]ny arguments or authorities not included in the brief . . . will be refused consideration by the Board, unless good cause is shown.” The reference in that section to the “reply brief filed pursuant to § 41.41” does not create a right for the Appellant to raise an argument in the reply brief that could have been raised in the principal brief but was not. Rather, that reference merely puts Appellants on notice that arguments that could be made in the reply brief, but are not, are waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). We therefore consider Appellant’s argument raised for the first time in the Reply Brief to be waived. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. We will also sustain the rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. Appeal 2020-006507 Application 15/081,434 13 CONCLUSION We conclude the Examiner did not err in rejecting claim 14 under 35 U.S.C. §112(b) and claims 1-4, 6, 8, 9, and 11-19 under 35 U.S.C. § 101. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14 112 Indefiniteness 14 1-4, 6, 8, 9, 11-19 101 Eligibility 1-4, 6, 8, 9, 11-19 Overall Outcome 1-4, 6, 8, 9, 11-19 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) (2019). AFFIRMED