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 on January 26, 2026 with respect to the rejection of claims 1-14 under 35 U.S.C. §101 as the claimed invention being directed to a judicial exception (i.e., abstract idea) without significantly more have been fully considered but they are not persuasive for the reasons noted below. The objection of claims 1-14 and the drawing for minor informalities have been withdrawn in view of the amendment presented by the Applicant(s). The Examiner acknowledges the addition of claim 15 by the amendment. Claims 1-15 are now 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 claims 1-15: 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 comprising:
analyzing at least one [stratum] within a stratigraphic structure of a formation to ascertain one or more physical properties for the at least one [stratum];
correlating the one or more physical properties for the at least one [stratum] to one or more formative hydraulic and sediment transport parameters for the at least one stratum based on a correlation;
modeling deposition of particulate matter during formation of the stratigraphic structure using a model constrained by the one or more formative hydraulic and sediment transport parameters to yield a three-dimensional model of the stratigraphic structure of the formation;
conditioning the three-dimensional model using the one or more physical properties for the at least one [stratum]; and
producing a subsurface model of the formation based on the conditioned three-dimensional model or an output thereof.
Prong I:
The claim recites the steps of “analyzing at least one [stratum]”, “correlating one or more physical properties”, “modeling deposition of particulate matter”, “conditioning the three-dimensional model” and “producing a subsurface model of the formation based on the conditioned three-dimensional model or an output thereof. 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, modeling using specific parameter involves some form of mathematical derivation). 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. Forming a three-dimensional model is a simple mathematical abstract and simply amount to interpretation of data points.
The instant claim as amended with the steps implements an algorithm that manipulate data values to produce a model without defining how the computer or the process functionality is specifically improved.
The courts have found that adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea (such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)) is not enough to integrate the abstract idea into a particular practical application or make the claim qualify as “significantly more” (see MPEP § 2106.05(g)).
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: conditioning the three-dimensional model using one or more physical properties for at least one [stratum]. 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 reasons as discussed above with regard to Prong 2. Claim 1 is rejected as ineligible under 35 USC §101.
Independent claim 14: is analogous to claim 1, except that the instant claim includes a processor, a memory and some form of program to carry the method of steps noted in claim 1 of the instant application. These elements are additional features 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 claim as a whole to integrate the abstract idea into a particular practical application or provide significantly more than the recited abstract idea. Claim 14 is therefore rejected as ineligible under 35 USC §101 as well.
Dependent claim 2: the instant claim is directed to “analyzing”, “correlating”, “modeling”, “updating” and “conditioning the three-dimensional model using one or more physical properties for at least one additional [stratum]”, which merely adds to the insignificant extra-solution activity being recited which is actually a mental process, as these steps are attributed to a purely mental process and do not change the §101 analysis.
Dependent claim 3: the instant claim is directed to deriving or computing fluid flow, connectivity, porosity or permeability which is a computational analysis and considered a purely mental process and does not change the §101 analysis.
Dependent claim 4: the instant claim is directed to producing a subsurface model based on the three-dimensional model which is a computational analysis and considered a purely mental process and does not change the §101 analysis.
Dependent claim 5: the instant claim is directed to performing a wellbore operation; however, the step is merely insignificant extra-solution activity because it does not specifically talk about what significant operation is carried out.
Dependent claim 6: the instant claim is directed to defining a forward model, and is a computational analysis and considered a purely mental process and does not change the §101 analysis.
Dependent claim 7: the instant claim is directed to an inversion model, which merely adds to the insignificant extra-solution activity being recited which is actually a mental process, does not change the §101 analysis.
Dependent claim 8: the instant claim is directed to forming a regime diagram which merely adds to the insignificant extra-solution activity being recited which is actually a mental process, as this step is attributed to a purely mental process and does not change the §101 analysis.
Dependent claim 9: the instant claim is directed to performing a flume experiment and driving a regime diagram based on data from the flume experiments which merely adds to the insignificant extra-solution activity being recited which is actually a mental process, as these steps are attributed to a purely mental process and do not change the §101 analysis.
Dependent claims 10-13: the instant claim is directed defining various variables associated with the analysis which merely adds to the insignificant extra-solution activity being recited which is actually a mental process, as these steps are attributed to a purely mental process and do not change the §101 analysis.
Dependent claim 15: the instant claim is directed to the wellbore operation without specifically tying how the drilling operation, simulation operation or a production operation is carried out using the outcome of the algorithm for creating a three-dimensional model.
Art of Interest
In reference to claims 1-14: Li et al. (U.S. Patent No. 7,742,875, hereon Li) discloses a method analyzing a stratum within a stratigraphic structure of a formation (i.e., geologic models of subsurface volumes) (see Li, Abstract). The method comprises obtaining geologic data, creating horizontal grid lines wherein at least one horizontal grid line represents deposit time lines based on the deposition rates from the geologic data, creating vertical grid lines, and modeling the sedimentary properties of the sedimentary basin or reservoir from the grids of geologic data created by the vertical and horizontal grid lines (see Li, column 4, lines 27-40).
However, Li does not correlate “the one or more physical properties for at least one [stratum] to one or more formative hydraulic and sediment transport parameters for at least one [stratum] based on the correlation, and modeling deposition of particulate matter during formation of the stratigraphic structure using a model constrained by the one or more formative hydraulic and sediment transport parameters to yield a three-dimensional model of the stratigraphic structure of the formation,” in combination with the rest of the claim limitations as claimed and defined by the Applicants.
Response to Argument
Applicant's arguments filed on January 26, 2026 with respect to the rejection of claims 1-14 under 35 U.S.C. §101 as the claimed invention being directed to a judicial exception (i.e., 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 12/17, first and second 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. The instant claim as amended with the steps implements an algorithm that manipulate data values to produce a model without defining how the computer or the process functionality is specifically improved. “[Producing] a subsurface model of the formation based on the conditioned three-dimensional model or an output thereof” does not transform the abstract idea into a significantly more than the abstract itself. The abstract idea is not integrated into a practical application.
Claim 15 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.
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").
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 “the wellbore operation comprises a drilling operation, stimulation operation, or a production operation” based on the three-dimensional model.” 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, claim 15 extends the idea of having “a wellbore operation”, however, the “wellbore 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:
Sun et al. (U.S. Patent No. 10,671,775) discloses disclosed herein a dynamically depth-averaged flow simulation systems and methods employing dynamically parameterized templates for depth profiling. Such template-based dynamic profiling enables the computational advantages of the depth-averaged flow simulation methods, particularly in terms of their computational speed, to be preserved while providing for sufficiently representative vertical variation of flow velocity and sediment concentrations and their variations in time and space.
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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