Lukyanov, Alexander et al.

Patent Trials and Appeals Board

Dec 6, 2019

14751736 - (D) (P.T.A.B. Dec. 6, 2019)

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.
14/751,736 06/26/2015 Alexander Lukyanov IS14.8805US-NP 1234
48879 7590 12/06/2019
SCHLUMBERGER INFORMATION SOLUTIONS
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
EXAMINER
KIM, EUNHEE
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
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 ALEXANDER LUKYANOV, HADI HAJIBEYGI, JOSTEIN
NATVIG, and KYRRE BRATVEDT
Appeal 2019-000986
Application 14/751,736
Technology Center 2100
Before BRADLEY W. BAUMEISTER, MIRIAM L. QUINN, and
ADAM J. PYONIN, Administrative Patent Judges.
QUINN, 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20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
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 Schlumberger
Technology Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a computer-implemented method for
modeling behavior of at least one fluid in a reservoir. Claim 1, reproduced
below with added limitation designators in brackets, illustrates the claimed
subject matter:
1. A computer-implemented method for modeling behavior
of at least one fluid in a reservoir, the method comprising:
[A] obtaining a plurality of measurements of a plurality of
physical parameters at a plurality of locations within the
reservoir, the plurality of physical parameters comprising at
least pressure;
[B] discretizing a system of partial differential equations that
model, based on the plurality of measurements, the plurality of
physical parameters;
[C] iterating, for each of a plurality of time steps, and until
convergence upon a solution to the system of partial differential
equations:
[1] approximating a rough solution to the system of
partial differential equations;
[2] applying a constrained pressure residual technique
to extract a system of pressure linear equations from the
rough solution to the system of partial differential
equations;
[3] applying a pre-smoothing technique at a fine scale
to determine an approximate solution to the system of
pressure linear equations;
[4] applying multi-scale multi-level processing to
improve the approximate solution to the system of
pressure linear equations;
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[5] applying a post-smoothing technique at a fine scale
to further improve the approximate solution to the system
of pressure linear equations; and
[6] solving the system of partial differential equations
for remaining physical parameters based on the further
improved approximate solution to the system of pressure
linear equations to generate a solution; and
[D] modeling flow of the at least one fluid in the reservoir
based in part on the solution that was generated.
Appeal Br. 16 (Claim Appendix).2
REJECTION
Claims 120 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Ans. 24.
ANALYSIS
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv) (2017). For example, here Appellant argues claims 120
by focusing arguments solely on claims 1 and 11 (independent claims).
Appeal Br. 415. We therefore decide the appeal for this rejection based on
claims 1 and 11. See 37 C.F.R. § 41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. But the

2 Claim 11 recites similar limitations.
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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 Bank Int’l, 573 U.S. 208, 216 (2014).
To determine whether a claim falls within an excluded category, the Court
has set out a two-part 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)). That framework requires to first consider 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.”). 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 and quotation marks omitted).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). 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); and (2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017 (Jan. 2018))). Guidance at 52–55.
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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 recites an inventive concept, by determining 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.

See Guidance at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
(a) The Judicial Exception—Step 2A, Prong 1, of the Guidance
The Guidance breaks the Alice/Mayo test for identifying claims
directed to judicial exceptions into two prongs. Guidance at 53. Step 2A,
Prong 1, asks whether the claims recite a judicial exception. Guidance at
52–54.
The Examiner finds that the claims are directed to “solving
mathematical equations based on measured data using mathematical
algorithms which is a data manipulation using a mathematical formula.”
Final Act. 2; Ans. 7 (“These steps describe the concept of mathematical
modeling a flow of fluid in a reservoir by solving a mathematical equation
based on measured data, which corresponds to concepts identified as abstract
ideas by the courts, such as mathematical relationships/formulas.”).
Appellant argues that the Examiner’s rejection “fails to set forth a
prima facie case of unpatentability because it is conclusory.” Appeal Br. 7.
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In particular, Appellant takes issue with the Examiner’s assertion that the
claims are directed to “data manipulation using a mathematical formula,”
faulting the Examiner for not explaining case law that Appellant argues
contradicts the Examiner’s finding. Id. We are not persuaded by
Appellant’s argument.
Referring to the added claim designators, claim limitations [A] and
[B] recite steps of obtaining measurements and discretizing the model’s
partial differential equations. Limitation [C] includes sub-parts [1] through
[6], which we collectively refer to as the “iteration step.” Limitation [D]
recites a step of modeling fluid flow in the reservoir based on the solution
generated in limitation [C].
Limitations [B] and [C], including sub-parts [1] through [6] all recite
steps of manipulating equations and solving those equations. As Appellant’s
Specification confirms, “the present disclosure provides a consistent and
robust numerical formulation for solutions to linear systems of equations
arising from the linearization of coupled nonlinear hyperbolic/parabolic
(elliptic) partial differential equations (PDEs) of fluid flow in heterogeneous
anisotropic porous media.” Spec. ¶ 23.
Limitation [B] recites discretizing the PDEs, and limitation [C] recites
performing, iteratively, a series of mathematical calculations until a
convergence upon a solution to the partial differential equations of step [B].
The mathematical calculations of limitations [1] through [6] include
approximating a rough solution to the partial differential equations, applying
each of a constrained pressure residual technique, a pre-smoothing
technique, multi-scale level processing, and a post-smoothing technique, and
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then solving the PDEs. The Examiner finds, and we agree, that all of these
steps recite analyzing data using a mathematical technique. Ans. 6.
The discretizing step of limitation [B], for example, is performed
using equation 8. See Ans. 1011 (citing Spec. ¶¶ 3132). The iteration
step of limitation [C] refers to iterations performed using the Newton-
Raphson technique, which uses equations 1014 to compute equation 9. See
id. 11. Sub-parts [1] through [6] refer to the equations 914, as identified by
the Examiner and further refer to the actions depicted in Figure 1. Id. at
1113. Thus, we agree with the Examiner that claims 1 and 11 recite the
abstract idea of mathematical concepts, and more particularly, mathematical
calculations.
(b) Integration into a Practical Idea—Step 2A, Prong 2, of the Guidance
Step 2A, Prong 2, asks whether the claims are “directed to” a judicial
exception or whether the claims integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 53 (explaining the practical
application test responds to “a growing body of decisions . . .
distinguish[ing] between claims that are ‘directed to’ a judicial exception . . .
and those that are not”). A practical application is one where the claim “will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 54.
For example, limitations that are indicative of “integration into a practical
application” can include:
1) Improvements to the functioning of a computer, or to any other
technology or technical field —see MPEP § 2106.05(a);

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2) Applying the judicial exception with, or by use of, a particular
machine —see MPEP § 2106.05(b);

3) Effecting a transformation or reduction of a particular article to a
different state or thing —see MPEP § 2106.05(c); and

4) Applying or using the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a
particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the
exception —see MPEP § 2106.05(e).

In contrast, limitations that are not indicative of “integration into a
practical application” may merely include:
1) Adding the words “apply it” (or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on a
computer, or merely uses a computer as a tool to perform an
abstract idea —see MPEP § 2106.05(f);

2) Adding insignificant extra-solution activity to the judicial
exception —see MPEP § 2106.05(g); and

3) Generally linking the use of the judicial exception to a particular
technological environment or field of use —see MPEP
§ 2106.05(h).
Appellant argues that the “claimed invention is directed to methods
and systems that improve the performance of computers in reservoir
modeling by providing an ordered combination of features that reduce the
number of linear iterations and reduced CPU time with respect to the
conventional techniques.” Appeal Br. 4. The Examiner responds, and we
agree, that the “claimed mathematical algorithm does not make better use of
the computer hardware, nor does it improve the general functioning of the
computer itself.” Ans. 7.
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To be sure, the Specification states that “pre-smoothing reduces
considerably the number of linear iterations, and it allows a substantial
speedup.” Spec. ¶ 96. Indeed, the Specification characterizes the process as
“computationally-efficient and [a] highly-accurate technique.” Id. ¶ 23. The
benefit, however, is not achieved by improving the computer’s computing
capabilities, or by improving any other technology. The processing of the
algorithm is improved, instead, because a different mathematical calculation
is being used to arrive at a more accurate solution.
That is Appellant’s invention entails using an improved mathematical
algorithm to perform mathematical calculations—using an improved abstract
idea. Neither the mathematical calculation selected nor the result of the
mathematical calculations are technological improvements—they are the
product of abstract ideas of mathematical concepts. The computer is but the
tool with which to perform the mathematical calculations. See Benson, 409
U.S. 63 (holding that merely implementing a mathematical principle on a
general purpose computer is a patent ineligible abstract idea); see also BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It 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.”); Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim
for a new abstract idea is still an abstract idea.”) (emphasis omitted); SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is
needed is an inventive concept in the non-abstract application realm.”); see
also Guidance, 84 Fed. Reg. at 53, n. 24 (“USPTO guidance uses the term
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‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.”).
Furthermore, limitations [A] and [D] do not integrate the abstract idea
into a practical application. Limitation [A] is directed to obtaining
measurements, including pressure readings of various locations within a
reservoir. Limitation [D], which recites modeling, actually involves
outputting on a display a pictorial representation of all or part of the
reservoir or delivering data to a separate process. Spec. ¶ 114.
Such steps comprise merely data gathering and outputting data,
respectively, which courts have found to comprise insignificant extra-
solution activity. See Bilski v. Kappos, 561 U.S. 593, 61112 (2010)
(stating that techniques to establish the inputs of an equation were token
extra-solution activity); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (finding that presenting offers and gathering
statistics amounted to mere data gathering).
Appellant argues that the claims are patent-eligible because they
produce an enhanced depiction of a real-world object, similar to Research
Corp. v. Microsoft, 627 F.3d 859 (Fed. Cir. 2010). We do not agree. Unlike
the claims here, in Research Corp. the claimed subject matter improved the
technology, i.e., the image display. Here, as discussed above, the claims
entail no technological improvement. The claims are directed to an
improved abstract idea of using mathematical concepts to generate results
more accurately or efficiently.
Appellant further argues that the claims are analogous to those in
Diamond v. Diehr, 450 U.S. 175, 188 (1981). We do not agree. Unlike the
claims in Diehr, here there is no change to how a system makes a physical
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product, e.g., synthetic rubber. The claims are directed to mathematical
calculations whose solution is merely outputted or displayed, but do not
transform any product or process. See Spec. ¶ 114 (explaining that the
outputting step of limitation [D] may take various forms, including merely
delivering data).
We conclude, based on our analysis above, that the additional
elements, alone or in combination, do not apply the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. For these reasons, we conclude that
claims 1 and 11 do not integrate the recited abstract idea into a practical
application within the meaning of the Guidance and, therefore, is directed to
an abstract idea.
(c) Inventive Concept—Step 2B of the Guidance
Because we agree with the Examiner that claims 1 and 11 are
“directed to” an abstract idea, we consider whether an additional element (or
combination of elements) adds a limitation that is not well-understood,
routine, conventional (“WURC”) activity in the field or whether the
additional elements simply append WURC activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 56. The Examiner’s finding that an additional
element (or combination of elements) is a WURC activity must be supported
with a factual determination. Id. (citing MPEP § 2106.05(d), as modified by
the Berkheimer Memorandum3).

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.),” April 19, 2018 (hereinafter “the Berkheimer Memorandum”).
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The Examiner determines that the “claimed embodiment is a
mathematical calculation that does not require any specialized computer
hardware and . . . [t]he claimed algorithms executes on routine, standard
computer hardware which is well-known in the computer arts . . . .” Ans. 8.
The Examiner also finds that the Specification discloses generic computer
components performing generic computing functions, as evidenced by the
Specification at paragraphs 119120. Id. 7.
We agree with the Examiner. The Specification describes the
processor system that performs the recited calculations as including “any
type of hardware component, including any necessary accompanying
firmware or software, for performing the disclosed implementations.” Spec.
¶ 120. That is, the Specification describes the computer implementation of
the program that performs the recited steps in terms of well-understood and
conventional computer technology. And as the Examiner finds, the
computer components perform generic (or routine) computing functions,
such as receiving input, processing information according to a set of
instructions, and displaying results. See Ans. 7. Accordingly, we conclude,
that the additional recitations of a computer implementation, or memory and
a processor, for performing the claimed method steps, either alone, or as an
ordered combination of elements (computer technology implementing the
recited steps), amount to WURC activity.
Appellant argues that the claimed invention is an unconventional
technical solution of a technical problem in accord with Amdocs (Israel) Ltd.
v. Openet Telecom., Inc., 841 F.3d 1288 (Fed. Cir. 2016). According to
Appellant, the claims provide “an iterative process that improves the
performance of computer devices used for modeling the behavior of
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reservoirs.” Appeal Br. 11. Furthermore, Appellant argues, “reservoirs can
be difficult to efficiently solve numerically,” thus, the claims recite an
“unconventional technological solution to the problem in which a
constrained pressure residual multiscale technique is employed (as recited)
and pre-smoothing and post-smoothing techniques are used iteratively.” Id.
In sum, Appellant concludes, the “computer” and “processor” operate in an
“unconventional manner to achieve an improvement in computing
performance.” Id. (emphasis added). We do not agree.
The Examiner correctly notes that the claim in Amdocs, unlike the
claim here, was directed to a technological problem rooted in computer
technology of distributed architecture and handling certain data in that
environment. Ans. 1617. The Examiner determines, and we agree, that the
claims here are rooted in mathematical constructs, not computer technology.
Id.
Appellant attempts to characterize the claims as directed to solving a
technical problem, but as alluded by Appellant, the challenge is “numerical.”
A numerical problem is not necessarily technological. The solution to the
problem lies in performing different mathematical calculations, not in
improving the computer technology or its environment. Amdocs is
inapposite in that the claims here involve a computer merely as the tool to
solve the numerical problem. The recited “computer,” “processor,” and
“memory” do not operate in any unconventional manner.
We therefore conclude that claims 1 and 11, considered as a whole, do
not include an inventive concept.
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CONCLUSION
For the reasons explained above, we conclude that claims 1 and 11 are
directed to an abstract idea that is not integrated into a practical application,
and does not recite an inventive concept. Accordingly, we sustain the
Examiner’s rejection of claims 1 and 11 under 35 U.S.C. § 101. For the
same reasons, we also sustain the § 101 rejection of dependent claims 210
and 1220.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
120 101 Eligibility 120

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