Ex Parte Alshawaf et al

Patent Trial and Appeal Board

Sep 4, 2018

12987526 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/987,526
35979 7590
Bracewell LLP
P.O. Box 61389
FILING DATE
01/10/2011
09/06/2018
Houston, TX 77208-1389
FIRST NAMED INVENTOR
Mohammed H. Alshawaf
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.
0004159.001071 8703
EXAMINER
ISHIZUKA, YOSHIHISA
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
docketing@bracewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMED H. ALSHAWAF, LEWIS M. WARLICK,
and F AHAD A. AL-AJMI
Appeal 2018-001013
Application 12/987 ,526
Technology Center 2800
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-27, 31, 35, and 39. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Saudi Arabian Oil Company as the real party in
interest. Appeal Brief filed May 3, 2017 ("App. Br."), 2.
2 Final Office Action entered September 8, 2016 ("Final Act.").
Appeal 2018-001013
Application 12/987 ,526
STATEMENT OF THE CASE
Appellants claim a computer-implemented method of obtaining a
measure of transmissibility of fluid in a subsurface formation at a location in
a well bore without production logging tool data from the subsurface
formation (independent claim 1 ), a data processing system for forming a
measure of transmissibility of fluid in a subsurface formation at a location in
a well bore without production logging tool data from the subsurface
formation (independent claim 12), and a data storage device having stored in
a non-transitory computer readable medium computer operable instructions
for causing a data processing system to form a measure of transmissibility of
fluid in a subsurface formation at a location in a well bore without
production logging tool data from the subsurface formation (independent
claim 20).
Claim 1 illustrates the subject matter on appeal and is reproduced
below with contested language italicized:
1. A computer implemented method of obtaining a measure
of transmissibility of fluid in a subsurface formation at a
location in a well bore without production logging tool data
from the subswface formation, the computer performing the
steps of:
obtaining a measure of the thickness of the formation
based on measurements obtained from a well logging tool;
obtaining a measure of the permeability of the formation
based on logging measurements obtained from a permeability
well logging tool;
obtaining a measure of the viscosity of the formation
fluid based on logging measurements obtained from a viscosity
well logging tool;
determining the transmissibility of fluid in the subsurface
formation at the location in the formation based on the obtained
measures of the thickness, permeability and viscosity.
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Application 12/987 ,526
App. Br. 26 (Claims Appendix) ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered
September 9, 2017 ("Ans."):
I. Claims 1-27, 31, 35, and 39 under 35 U.S.C. § 101 as
directed to non-statutory subject matter;
II. Claims 1, 3, 7, 8, 11, 12, 15, 16, 19, 20, 23, 24, 27, 31, 35, and
39 under 35 U.S.C. § I03(a) as unpatentable over Zazovsky (US
2005/0171699 Al, published August 4, 2005) in view of Flaum (US
6,140,817, issued October 31, 2000);
III. Claims 2, 6, 13, 14, 21, and 22 under 35 U.S.C. § I03(a) as
unpatentable over Zazovsky in view of Flaum and Mullins (US
2009/0288881 Al, published November 26, 2009);
IV. Claim 4 under 35 U.S.C. § I03(a) as unpatentable over
Zazovsky in view of Flaum and Ye (US 6,477,469 B2, issued November 5,
2002);
V. Claim 5 under 35 U.S.C. § I03(a) as unpatentable over
Zazovsky in view of Flaum and Prammer (US 6,023,164, issued February 8,
2000);
VI. Claims 9, 17, and 25 under 35 U.S.C. § I03(a) as unpatentable
over Zazovsky in view of Flaum and Feth et al., Lake Bonneville: Geology
and Hydrology of the Weber Delta District, Including Ogden, Utah,
Geological Survey Professional Paper 518, 1966; and
VII. Claims 10, 18, and 26 as unpatentable over Zazovsky in view of
Flaum, Mullins, and Feth.
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Application 12/987 ,526
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' timely contentions, 3 we affirm the Examiner's rejection
of claims 1-27, 31, 35, and 39 under 35 U.S.C. § 101 for the reasons set
forth in the Final Action, the Answer, and below, and reverse the Examiner's
rejections of claims 1-27, 31, 35, and 39 under 35 U.S.C. § 103(a) for the
reasons set forth below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each issue Appellants
identify. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 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
Appellants argue claims 1-27, 31, 35, and 39 as a group on the basis
of claim 1, to which we accordingly limit our discussion. App. Br. 17-38;
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the recitation in claim 1 of determining
the transmissibility of fluid in a subsurface formation at a location in the
formation based on obtained measures of thickness, permeability and
3 We do not consider any new argument Appellants raise in the Reply Brief
that Appellants could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 4I.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 12/987 ,526
viscosity is an abstract idea corresponding to a mathematical relation and
organizing information through mathematical correlations. Final Act. 4
(citing Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014).
The Examiner determines that the additional steps and elements
recited in claim 1, considered separately and in combination, do not add
significantly more to the abstract idea. Final Act. 4--5. Specifically, the
Examiner determines that the steps of obtaining a measure of the thickness
of the formation based on measurements obtained from a well logging tool,
obtaining a measure of the permeability of the formation based on logging
measurements obtained from a permeability well logging tool, and obtaining
a measure of the viscosity of the formation fluid based on logging
measurements obtained from a viscosity well logging tool, are conventional
data gathering steps necessary to implement the abstract idea, which
Appellants do not dispute. Compare Final Act. 4 and Ans. 9, with Reply Br.
7-8. The Examiner also determines that the computer recited in the
preamble of claim 1 "is recited at a high level of generality, [ and is]
necessary, routine, or conventional to facilitate the application of the abstract
idea," which Appellants also do not dispute. Compare Final Act. 5, with
Reply Br. 7-8.
The Examiner determines de facto that the subject matter of claim 1 is
therefore ineligible for patenting. Final Act. 4--5.
Appellants argue that the claims are not directed to an abstract idea
because the claimed subject matter includes a specific combination of
features that extend well beyond merely "mathematical relations and
organizing information through mathematical correlations." App. Br. 18-
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Application 12/987 ,526
20. Appellants further contend that the claimed subject matter amounts to
significantly more than the "alleged abstract idea" because the claims
include non-conventional elements that "effect an improvement in [another]
technology or technical field" and are thus analogous to the claims in
Diamond v. Diehr, 450 U.S. 175, 177-78 (1981). App. Br. 20-23.
Appellants assert that the claimed subject matter solves the technological
problem of measuring transmissibility of fluid in a subsurface formation to
generate model flow profiles using conventional logging operations without
the need to engage in expensive and time consuming production logging
operations. App. Br. 22-23; Reply Br. 7-8.
The Court in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347
(2014) identified a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under § 101. In
the first step, "[ w ]e must ... determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. Step two involves "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,"' and is more than "well-understood, routine,
conventional activit[y ]." Alice, 134 S. Ct. at 2355, 2359 (first alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72-73 (2012)).
Claim 1 recites a method in which a computer performs the steps of
obtaining measures of the thickness, permeability, and viscosity of a
subsurface formation, and determining the transmissibility of fluid in the
subsurface formation based on the obtained measures of the thickness,
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Application 12/987 ,526
permeability and viscosity. Contrary to Appellants' arguments, as the
Examiner correctly determines, the step of determining the transmissibility
of fluid in a subsurface formation is directed to an abstract idea of
manipulating or analyzing data (measures of the thickness, permeability and
viscosity) to generate additional data ( transmissibility of fluid) using a
mathematical algorithm. See Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible."); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016) (abstract ideas include collecting information and analyzing
that information "by steps people go through in their minds, or by
mathematical algorithms"); Synopsis, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146-47 (Fed. Cir. 2016) ("[W]e continue to 'treat[] analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category."' (second alteration in original) ( citation omitted));
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (organizing, displaying, and manipulating data is an abstract
idea).
As the Examiner also correctly determines, the steps of obtaining
measures of the thickness, permeability, and viscosity of a subsurface
formation are conventional data gathering steps, and therefore, individually,
and in combination, do not constitute an inventive concept that transforms
the abstract idea into a patent-eligible application. Final Act. 4; Ans. 9.
Content Extraction, 776 F.3d 1343, 1347 ("[t]he concept of data collection,
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Application 12/987 ,526
recognition, and storage is undisputedly well-known," and "humans have
always performed these functions"); Electric Power Grp, LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("[C]ollecting information,
including when limited to particular content ( which does not change its
character as information)," and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more," are
"within the realm of abstract ideas.")
In addition, performing the steps recited in claim 1 using a
conventional computer also does not transform the abstract idea into a
patent-eligible application. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715-716 (Fed. Cir. 2014) (holding the claims insufficient to
supply an inventive concept because they did not "do significantly more than
simply describe [the] abstract method," but rather are simply "conventional
steps, specified at a high level of generality" (quoting Alice, 134 S. Ct. at
2357)).
Accordingly, when considered as an ordered combination, the steps
recited in claim 1 relate to gathering data through conventional means
( obtaining measures of the thickness, permeability, and viscosity of a
subsurface formation) and manipulating or analyzing the data (measures of
the thickness, permeability and viscosity) using a mathematical algorithm
executed on a conventional computer to generate additional data
( transmissibility of fluid). Claim 1 is therefore ineligible for patenting
because it is directed to an abstract idea, and lacks an inventive concept that
amounts to significantly more than a patent upon the abstract idea itself.
Alice, 134 S. Ct. at 2355, 2359.
Although Appellants assert that claim 1 is analogous to the claims in
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Diehr because the claim includes non-conventional elements that "effect an
improvement in [another] technology or technical field," as the Examiner
correctly finds, Appellants do not actually identify any "non-conventional"
elements in claim 1. Ans. 9. In addition, although the method of claim 1
may solve a technological problem, the claimed method is directed to
manipulating data gathered by conventional means with a conventional
computer to generate additional data, and is therefore directed to an
improvement in a mathematical algorithm, which our patent laws are not
designed to protect. Parker v. Flook, 437 U.S. 584, 591, 595 (1978) ("if a
claim is directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory.") (quoting In re Richman, 563 F.2d 1026, 1030 (CCPA 1977)).
We accordingly sustain the Examiner's rejection of claims 1-27, 31,
35, and 39 under 35 U.S.C. § 101.
Rejections II-VII
In reaching our decision, we need consider only independent claims 1,
12, and 20, which each recite obtaining or forming a measure of
transmissibility of fluid in a subsurface formation at a location in a well bore
without production logging tool data from the subsurface formation.
The Examiner determines that "[ u ]nder a broadest reasonable
interpretation 'production logging tool data' would reasonably be any data
or information related to a production logging tool." Ans. 2. The Examiner
therefore interprets "production logging tool data" as "the type or name or
manufacture regarding the actual production logging tool." Final Act. 6;
Ans. 2. The Examiner finds that "[i]t would be inherent that the subsurface
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Application 12/987 ,526
formation could not supply this information, and therefore would not be
involved in obtaining a measure of transmissibility." Final Act. 6.
However, as Appellants point out (Reply Br. 3), the phrase
"production logging tool data" recited in independent claims 1, 20, and 20 is
part of the larger phrase "production logging tool data from the subsurface
formation." By interpreting only a portion of the entire phrase, the
Examiner improperly fails to consider the full claim language. In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (explaining that the
broadest reasonable interpretation standard does not give the Patent Office
an unfettered license to interpret the words in a claim without regard for the
full claim language and the written description.)
Furthermore, Appellants' Specification indicates that a "production
logging tool ( or PL T)" is a well logging tool used to evaluate wells to
determine flow profiles of subsurface earth formations where the wells are
located. Spec. ,r,r 1, 3. Appellants' Specification states that "for those wells
in which a production logging tool run was not run and PLT data thus
unavailable, analysis of the subsurface formation flow was based on data
available from the other, earlier logging tool runs." Id. (emphasis added).
Appellants' Specification also refers to "data from an actual well showing
cumulative transmissibility as a function of measured depth of a flow profile
from a conventional PLT log," and to "data obtained and plotted from a
production logging tool in an actual well." Spec. ,r,r 51, 52 (reference
numerals omitted).
According to Appellants' Specification, "production logging tool data
from a subsurface formation" thus refers to data obtained by running a
production logging tool in a well in a subsurface earth formation. The
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Application 12/987 ,526
Examiner's interpretation of "production logging tool data" as "the type or
name or manufacture regarding the actual production logging tool" is
inconsistent with how this phrase is used in Appellants' Specification, and
with the resulting meaning accorded this phrase by the Specification. The
Examiner's interpretation is therefore unduly broad. In re Morris, 127 F.3d
1048, 1054--55 (Fed. Cir. 1997) ("While the Board must give the terms their
broadest reasonable construction, the construction cannot be divorced from
the specification and the record evidence."); In re Baker Hughes, Inc., 215
F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that
is "beyond that which was reasonable in light of the totality of the written
description" in the Specification); In re Zietz, 893 F.2d 319, 321-22 (Fed.
Cir. 1989) ("During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. When the applicant
states the meaning that the claim terms are intended to have, the claims are
examined with that meaning, in order to achieve a complete exploration of
the applicant's invention and its relation to the prior art.").
Because the Examiner does not interpret the phrase "production
logging tool data from the subsurface formation" in a manner consistent with
how this phrase is used in Appellants' Specification, the Examiner does not
establish that the applied prior art discloses or would have suggested
obtaining or forming a measure of transmissibility of fluid in a subsurface
formation at a location in a well bore "without production logging tool data
from the subsurface formation" as recited in claims 1, 12, and 20."
We accordingly do not sustain the Examiner's rejections of claims 1-
27, 31, 35, and 39 under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner's rejection of claims 1-27, 31, 35, and 39
under 35 U.S.C. § 101 and reverse the Examiner's rejections of claims 1-27,
31, 35, and 39 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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