Ex Parte DiCaprio et al

Patent Trial and Appeal BoardMar 22, 2019

13701431 (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/701,431 11/30/2012 34477 7590 03/26/2019 ExxonMobil Upstream Research Company 22777 Springwoods Village Parkway (EMHC-Nl.4A.607) Spring, TX 77389 FIRST NAMED INVENTOR Christopher J. DiCaprio 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. 2010EM223 6646 EXAMINER SUGLO, JANET L ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 03/26/2019 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 CHRISTOPHER J. DICAPRIO, REBECCA L. SAL TZER, and ANOOP A. MULL UR Appeal2018-005493 Application 13/701,431 Technology Center 2800 Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (ExxonMobile Upstream Research Company) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 4--8, and 12-19. We have jurisdiction under 35 U.S.C. Â§ 6(b ). The Invention The claims are to a method for estimating lithology of a subsurface region. Claim 1 is illustrative: 1. A remote, deterministic method for estimating at least lithology of a subsurface region, comprising: obtaining at least one type of remote geophysical survey data representing the subsurface region; Appeal2018-005493 Application 13/701,431 identifying a plurality of possible lithology classes, each class being associated with a value of the discrete valued model parameter, and each class being defined by one or more deterministic rock physics equations; developing a model of the subsurface region in terms of at least lithology, porosity, and water saturation, wherein the model subdivides the subsurface region into discrete cells in which the lithology is represented as a value of the discrete valued model parameter; using a computer to perform an inversion that inverts the at least one type of remote geophysical survey data to obtain at least the lithology, the porosity, and the water saturation of the subsurface region with the one or more deterministic rock physics equations that provide a mapping between the at least one type of remote geophysical survey data and the lithology, the porosity, and the water saturation of the subsurface region, wherein the inversion finds a best-fitting value of the lithology, the porosity, and the water saturation for each cell in the model by minimizing a misfit between the at least one type of remote geophysical survey data and simulated data generated by the computer from the model of the subsurface region; and drilling a well into the subsurface region based at least partly on the lithology, the porosity and the water saturation determined from the inversion. The Rejections Claims 1, 4--8, and 12-19 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description and enablement requirements. OPINION We reverse the rejections. We need address only the sole independent claim, i.e., claim 1. Written description For an applicant to comply with the 35 U.S.C. Â§ 112, first paragraph, written description requirement the applicant's specification must "convey 2 Appeal2018-005493 Application 13/701,431 with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991)). The Examiner finds that to provide written descriptive support for a claimed invention, "[t]he steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed" (Non-final Act. 3--4). 1 As indicated above, that is not the correct test for written descriptive support. The Examiner finds that "[ t ]here are no rock physics equations in the original specification, much less any support in the specification for the entirety of the limitations that relate to the rock physics equations" (Ans. 4-- 5). The Examiner acknowledges that rock physics equations were well known in the art (Ans. 6). "The specification need not disclose what is well known in the art." In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991), citing Lindermann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984). The Appellant's claims do not require particular rock physics equations. The Specification discloses and the claims recite use of rock physics equations generally in the claimed method for estimating at least lithology of a subsurface region (Spec. ,r,r 13, 19). 1 "Non-final Act." herein refers to the non-final action dated January 5, 2017. 3 Appeal2018-005493 Application 13/701,431 Thus, the Examiner has not established that the Appellant's Specification fails to convey with reasonable clarity to those skilled in the art that the inventors were in possession of the claimed method. Accordingly, we reverse the rejection under the 35 U.S.C. Â§ 112, first paragraph, written description requirement. Enablement A specification complies with the 35 U.S.C. Â§ 112, first paragraph, enablement requirement if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). As stated by the court in Wright, 999 F.2d at 1561---62: Nothing more than objective enablement is required, and therefore it is irrelevant whether this teaching is provided through broad terminology or illustrative examples. [Citation omitted.] When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. [Citation omitted.] The Examiner finds that there are many rock physics equations (Ans. 6) and "[t]here is no description within the specification of the steps of the process or any equations involved" (Non-final Act. 5), so "[e]ven a 4 Appeal2018-005493 Application 13/701,431 highly skilled artisan would not have enough guidance to know which rock physics equations to use without undue experimentation" (Ans. 6-7). The Examiner's finding that one of ordinary skill in the art could not have used rock physics equations in the Appellant's method without undue experimentation merely because there are many rock physics equations is unsupported by evidence or technical reasoning. The Examiner's mere assertion is insufficient for establishing a prima facie case of nonenablement. We therefore reverse the rejection under the 35 U.S.C. Â§ 112, first paragraph, enablement requirement. DECISION The rejections of claims 1, 4--8, and 12-19 under the 35 U.S.C. Â§ 112, first paragraph, written description and enablement requirements are reversed. The Examiner's decision is reversed. REVERSED 5