Detailed Action
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant's arguments filed January 22, 2026 with respect to the rejection of claims 1-18 under 35 U.S.C. §101 as the claimed invention being directed to abstract idea without significantly more have been fully considered but they are not persuasive for the reasons noted below. The Examiner acknowledges the addition of claims 19 and 20 by the amendment. Claims 1-20 are pending in the application. No claims are allowed.
Explanation of Rejection
Claim rejection – 35 U.S.C. §101
35 U.S.C. §101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
In reference to claim 1-20: the claimed invention is directed to a judicial exception (i.e., abstract idea) without significantly more.
The requirement for subject matter eligibility test for products and processes requires first, the claimed invention must be to one of the four statutory categories. 35 U.S.C. §101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed).
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
In the first step, it is to be determined whether the patent claim under examination is directed to an abstract idea. If so, in the second step of analysis, it is to be determined whether the patent adds to the idea “something more” or "significantly more” that embodies an “inventive concept.”
In the instant case, claim 1 is representative and it is reproduced here with the limitations that are part of the abstract idea in bold:
A method for managing hydrocarbons, comprising:
assigning a bedform type to a bedform;
extracting a cross-section of seismic data along the bedform in-line +/-15° with a fluid flow direction associated with the bedform;
analyzing the cross-section to ascertain a structural characteristic of the bedform, wherein the structural characteristic comprises one or more of: a wavelength, a wave height, a bedform slope, a bedform asymmetry, a bedform migration, and a planform crest shape;
estimating a lithology for the bedform based on a correlation between (a) the lithology and (b) the bedform type and the structural characteristic; and
performing a hydrocarbon management operation based on the estimated lithology for the bedform
Step 2A: Prong I:
The claim recites the steps of “assigning a bedform type to a bedform; extracting a cross-section of seismic data along the bedform in-line +/-15° with a fluid flow direction associated with the bedform; analyzing the cross-section to ascertain a structural characteristic of the bedform, wherein the structural characteristic comprises one or more of: a wavelength, a wave height, a bedform slope, a bedform asymmetry, a bedform migration, and a planform crest shape; and estimating a lithology for the bedform based on a correlation between (a) the lithology and (b) the bedform type and the structural characteristic; and performing a hydrocarbon management operation based on the estimated lithology”.
These limitations could be carried out as a purely mental process (at least in a some relatively simple situations) and/or they could amount to a mathematical calculation (for example, extracting a cross section of seismic data or establishing a correlation between a lithology and bedform type may require mathematical algorithm). The amended claim also includes the idea of performing a hydrocarbon management operation based on the estimated lithology for the bedform”; however, management of an operation broadly interpreted may read on human activity. For instance, estimated lithology, could be interpreted as description of physical characteristics, such as color, texture, composition of material; and the management of operation using such attributes reads on human activity.
Therefore, it is also “important to note that a mathematical concept need not be expressed in mathematical symbols, because "words used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing information through mathematical correlations’’ are directed to an abstract idea); and Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable value protected life insurance policy by performing calculations and manipulating the results’’ as an abstract idea) (see MPEP 2106,04(a)(2)). Therefore, the recited method falls in the abstract idea grouping of mental processes and/or mathematical concepts at Prong 1 of the §101 analysis.
Prong II:
This abstract idea is not integrated into a practical application at Prong 2 of the
§101 analysis because the claim does not recite sufficient additional elements to integrate the abstract idea into a practical application.
The claim does not recite applying the abstract idea with, or by use of, any
particular machine, nor does the claim affect a real-world transformation or reduction of a particular article to a different state or thing. The claim amounts to manipulating data: extract a cross-section of seismic data, analyze the cross section and estimate a lithology for the bedform based on the correlation between (a) lithology and (b) the bedform type and the structural characteristic (for instance, a wavelength, a wave height etc..). The claim does not recite any particular real-world actions that are taken as a result of estimating the lithology. Therefore, the claimed invention does not appear to be limited to the use of the mental process or math in a particular practical application, but instead the claim appears to monopolize the mental process or math itself, in any practical application where it might conceivably be used.
Step 2B:
Finally, at step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea for the same reason as discussed above with regard to Prong II. Claim 1 is rejected as ineligible under 35 U.S.C. §101.
Independent claims 9, 10 and 18: are analogous to claim 1, except claims 9 and 18 additionally recite a system having a processor, a memory, and a program of some kind in order to carry out the ideas similar to the method steps of claims 1 and 10 of the instant application. The additional recited elements, a processor, memory and programs of some kind are additional elements separate from the abstract idea that need to be considered at Prong II of the §101 analysis. However, these additional elements are merely generic computer processing components that are invoked as a tool to perform the abstract idea, which does not cause the claims as a whole to integrate the abstract idea into a particular practical application or provide significantly more than the recited abstract idea. Therefore, claims 9 and 18 are also rejected as ineligible under 35 U.S.C. §101 as well.
Dependent claim 2: the instant claim is directed to the analyzing of the “cross section by de-compacting a portion of the cross section at least 10 meters below a subsea surface to yield a de-compacted seismic data” which is data gathering step at a high level of generality.
Dependent claim 3: the instant claim is directed to modeling a subterranean formation which merely adds to the significant extra-solution activity being recited which is actually a mental process and does not change the §101 analysis.
Dependent claim 4: the instant claim is directed to performing a wellbore operation based on the subsurface model; however, it is not a specific action as “performing operation” may also read on a human activity per se. Therefore, it merely adds to the significantly extra-solution activity being recited which is actually a mental process, and is attributed to a purely a mental process and does not change the §101 analysis.
Dependent claim 5: the instant claim is directed to estimating a porosity, permeability, connectivity, or any combination thereof based on the lithology, and is attributed to a purely a mental process and does not change the §101 analysis.
Dependent claim 6: the instant claim is directed to modeling a subterranean formation comprising the bedform with a subsurface model using the lithology and the porosity, permeability, connectivity, or any combination as in input to the subsurface model, and is attributed to purely a mental process and does not change the §101 analysis.
Dependent claim 7: the instant claim is directed to performing a wellbore operation based on the subsurface model; however, it is not a specific action as “performing operation” may also read on a human activity per se. Therefore, it merely adds to the significantly extra-solution activity being recited which is actually a mental process, and is attributed to a purely a mental process and does not change the §101 analysis.
Dependent claim 8: the instant claim is directed to analyzing of the cross-section uses image analysis software; however, analyzing using a software would be considered an extension of a human thought process and does not change the §101 analysis.
Dependent claim 11: the instant claim is directed to the analyzing of the “cross section by de-compacting a portion of the cross section at least 10 meters below a subsea surface to yield a de-compacted seismic data” which is data gathering step at a high level of generality.
Dependent claim 12: the instant claim is directed to modeling a subterranean formation comprising the bedform with a subsurface model using the grain size characteristic as an input to the subsurface model; which merely adds to the significant extra-solution activity being recited which is actually a mental process and does not change the §101 analysis.
Dependent claim 13: the instant claim is directed to performing a wellbore operation based on the subsurface model; however, it is not a specific action as “performing operation” may also read on a human activity per se. Therefore, it merely adds to the significantly extra-solution activity being recited which is actually a mental process, and is attributed to a purely a mental process and does not change the §101 analysis.
Dependent claim 14: the instant claim is directed to estimating a porosity, permeability, connectivity, or any combination thereof based on the lithology, and is attributed to a purely a mental process and does not change the §101 analysis.
Dependent claim 15: the instant claim is directed to modeling a subterranean formation comprising the bedform with a subsurface model using the grain size characteristic and the porosity, permeability, connectivity, or any combination as an input to the subsurface model; which merely adds to the significant extra-solution activity being recited which is actually a mental process and does not change the §101 analysis.
Dependent claim 16: the instant claim is directed to performing a wellbore operation based on the subsurface model; however, it is not a specific action as “performing operation” may also read on a human activity per se. Therefore, it merely adds to the significantly extra-solution activity being recited which is actually a mental process, and is attributed to a purely a mental process and does not change the §101 analysis.
Dependent claim 19 and 20: the instant clams are directed to “the hydrocarbon management operation” having to deal with “drilling operation, a simulation operation or a production operation”, but they lack the concept of how these actions related to the computational analysis.
Art of Interest
In reference to claims 1-20: Spagnolo et al. (PLOS Publication, “Exploring Explanations of Subglacial Bedform Sizes Using Statistical Models”, hereon Spagnolo) discloses a statistical approach to bridge the gap between geomorphological observations and physical models. The method directly links measurable size-frequency parameters to properties of ice sheet flow (e.g., ice velocity). Further, one main advantage is it allows statistically developing existing models which includes quantitative predictions are made about sizes that would make the models testable. The first illustration of this is given for a hypothesized repeat geophysical survey of bedforms under active ice. Further, it shows that the potential of size-frequency distributions of subglacial bedforms to assist the elucidation of subglacial processes and better constrain ice sheet models (see Spagnolo, page Abstract).
The instant application (claims 1 and 9) differs in that it “[assigns] bedform type to a bedform; [extracts] a cross-section of seismic data along the bedform in-line +/-15o with a fluid flow direction associated with the bedform; [analyzes] the cross-section …., and [estimates] a lithology for the bedform based on a correlation between. the lithology and the bedform type and structural characteristic,” and
The instant application (claims 10 and 18) differs in that it “[assigns] bedform type to a bedform; [extracts] a cross-section of seismic data along the bedform in-line +/-15o with a fluid flow direction associated with the bedform; [analyzes] the cross-section …., and [estimates] a grain size characteristic for the bedform based on a correlation between. the grain size characteristic and the bedform type and structural characteristics.
Response to Argument
Applicant's arguments filed January 22, 2026 with respect to the rejection of claims 1-18 under 35 U.S.C. §101 as the claimed invention being directed to abstract idea without significantly more have been fully considered but they are not persuasive for the reasons noted above and further explained below.
Applicant(s) argued that “the 2019 Revised Patent Subject Matter Eligibility Guidance, published in the Federal Register on January 7, 2019 …provides several examples [and] ..claim in [the] Example 39 is analogous to the present claim” (see argument, page 11/16, second and fourth paragraphs).
The Examiner respectfully disagrees for the following reason(s). For the purpose of discussion, Applicant(s) asserted claim from Example 39 is reproduced here:
A computer-implemented method of training a neural network for facial detection comprising:
collecting a set of digital facial images from a database;
applying one or more transformations to each digital facial image including mirroring, rotating, smoothing, or contrast reduction to create a modified set of digital facial images;
creating a first training set comprising the collected set of digital facial images, the modified set of digital facial images, and a set of digital non-facial images;
training the neural network in a first stage using the first training set;
creating a second training set for a second stage of training comprising the first training set and digital non- facial images that are incorrectly detected as facial images after the first stage of training; and
training the neural network in a second stage using the second training set.
The claim in Example 39 is about “collecting a digital image” using those digital image values or attributes to train a neural network in which first and second training set to train a neural network in the first and second stage using those attributes as described above; however, the instant claim is not training or transforming anything. After estimating a lithology for the bedform based on correlation between (a) the lithology, and (b) the bedform type and structural characteristics ( a typical human activity, the claim further talks about “performing a hydrocarbon management operation based on the estimated lithology for the bedform”. However, it is not even “a significantly more than the abstract idea” because “performing a hydrocarbon management operation” is interpreted as broad enough to encompass human activity. There is a lack of specificity from what is “estimated” to what is being performed in a hydrocarbon management operation”. In other words, the added limitation in the current form does not transform the abstract idea into a significantly more concept.
In page 14/16, second and third paragraph, it is argued that “the Applicants submit that the complexity of the concepts of lithology and grain size estimation associated with Applicants’ technological innovation are readily apparent from Applicants’ specification. …. Moreover, it is not practically possible to perform the lithology and grain size estimation described in the Applicant’s specification without the use of a computer.”
However, the complexity of the computation or the analysis should not make the instant claim none abstract idea because the claims should state an idea more than the abstract idea and they should transform the abstract idea into significantly more.
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes performed by humans with the assistance of physical aids such as pens or paper are explained further below with respect to point B.
Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
One way to look at the instant application would be to use the outcome of the computational analysis described in the steps to be effective and meaningfully tied to the drilling operation, rather than stating that “equipment to perform a hydrocarbon management operation based on the estimated gain size characteristic for the bedform.” For instance, in Diamond vs Diehr, 450 U.S. 175(1981) states:
In Diehr, by contrast [with Flook], we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a "well-known" mathematical equation, but it used that equation in a process designed to solve a technological problem in "conventional industry practice." The invention in Diehr used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha[d] not been able to obtain." The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These additional steps, we recently explained, "transformed the process into an inventive application of the formula." Mayo, supra, at ___, 132 S.Ct., at 1299. In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.
Therefore, claims 19 and 20 extend the idea of having application for the management operation, the management operation has to be tied in a way Diamond vs Diehr transformed the abstract idea into a significantly more than the computational analysis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lewis et al. (U.S. Patent No. 9,575,195) discloses A method to detect presence of hydrocarbons in a subterranean formation. The method includes identifying a geological interval in the subterranean formation, analyzing a measurement of a rock sample obtained from the geological interval to generate a rock sample analysis result, wherein the rock sample analysis result indicates the presence of hydrocarbons in the geologic interval, analyzing, in response to the rock sample analysis result indicating the presence of hydrocarbons, a supplemental measurement different than the measurement of the rock sample to generate a supplemental analysis result.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ELIAS DESTA/
Primary Examiner, Art Unit 2857
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