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 .
Claim Rejections - 35 USC § 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.
Claims 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
According to the first part of the analysis, in the instant case, claims 18-20 are directed to a method. Thus, each of the claims falls within one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter).
Regarding claim 18:
A method, comprising:
dissolving deuterated diamondoids in a supercritical state of carbon dioxide CO2;
injecting the deuterated diamondoids with CO2 in an injection well;
detecting and monitoring a presence of the deuterated diamondoids from at least one of a downhole location in a production well or a surface location of the production well; and
determining reservoir connectivity between the injection well and the production well.
Step 2A Prong 1:
“dissolving deuterated diamondoids in a supercritical state of carbon dioxide CO2” is directed to math because the process involves modeling complex thermodynamic and physical behaviors to optimize extraction and synthesis, particulary when producing materials for nanotechnology or pharmaceuticals. The solubility of diamondoids (like adamantane and diamantine) in scCO2 is correlated using equation of state, such as the Patel-Teja equation, which enables the prediction of solubility at various pressures and temperatures. To describe the kinetics of dissolution, researchers use partial differential equations (PDEs) to model the mass transfer of the diamondoids into the supercritical fluid. The process requires analyzing experimental data through mathematical techniques like Response Surface Methodology (RSM) to predict extraction efficiency at different operational conditions.
“injecting the deuterated diamondoids with CO2 in an injection well” is directed to math because to understand how deuterated diamondoids interact with CO2 , reserarches use molecular dynamic simulations, which rely on calculating the motion of atoms. Injecting CO2 involves modeling, often using software like TOUGH2, which utilizes coupled mathematical equations to describe the transport of multiphase, multicomponent fluids (water, salt, CO2) in porous media. The injection process involves solving equations to maximize the storage capacity and optimize the pressure and temperature of the reservoir.
“detecting and monitoring a presence of the deuterated diamondoids from at least one of a downhole location in a production well or a surface location of the production well” is directed to math because deuterated diamondoids are frequently used as internal standards in Quantitative Diamondiod Analysis (QDA) to track petroleum maturation, thermal cracking, and source correlation. The identification and concentration determination of diamondoids use Gas Chromatography-Mass Spectrometry. This involves calculating ratios of peak areas of diamondoid compounds in the oil samples relative to the added deuterated internal standard to calculate absolute concentrations.
“determining reservoir connectivity between the injection well and the production well” is directed to math because it involves applying mathematical models, statistical techniques, and computational algorithms to analyze production data (flow rates, pressures) to understand how fluids move between wells.
Each limitation recites in the claim is a process that, under BRI covers performance of the limitation in the mind but for the recitation of a generic “injecting, measurement” which is a mere indication of the field of use. Nothing in the claim elements precludes the steps from practically being performed in the mind. Thus, the claim recites a mental process.
Further, the claim recites the step of " dissolving deuterated diamondoids in a supercritical state of carbon dioxide CO2; injecting the deuterated diamondoids with CO2 in an injection well; detecting and monitoring a presence of the deuterated diamondoids from at least one of a downhole location in a production well or a surface location of the production well; and determining reservoir connectivity between the injection well and the production well” which as drafted, under BRI recites a mathematical calculation. The grouping of "mathematical concepts” in the 2019 PED includes "mathematical calculations" as an exemplar of an abstract idea. 2019 PEG Section |, 84 Fed. Reg. at 52. Thus, the recited limitation falls into the "mathematical concept" grouping of abstract ideas. This limitation also falls into the “mental process” group of abstract ideas, because the recited mathematical calculation is simple enough that it can be practically performed in the human mind, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889.
Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation. See October Update at Section I(C)(i) and (iii).
Additional Elements:
Step 2A Prong 2:
“dissolving deuterated diamondoids in a supercritical state of carbon dioxide CO2” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“injecting the deuterated diamondoids with CO2 in an injection well” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“detecting and monitoring a presence of the deuterated diamondoids from at least one of a downhole location in a production well or a surface location of the production well” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“determining reservoir connectivity between the injection well and the production well” is directed to insignificant activity and does not integrate the judicial exception into a practical application. See MPEP 2106.05(g).
The claim is merely selecting data, manipulating or analyzing the data using math and mental process, and displaying the results.
This is similar to electric power: MPEP 2106.05(h) vi. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The claim as a whole does not meet any of the following criteria to integrate the judicial exception into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
Step 2B:
“dissolving deuterated diamondoids in a supercritical state of carbon dioxide CO2” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“injecting the deuterated diamondoids with CO2 in an injection well” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“detecting and monitoring a presence of the deuterated diamondoids from at least one of a downhole location in a production well or a surface location of the production well” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“determining reservoir connectivity between the injection well and the production well” is directed to insignificant activity and does not amount to significantly more than the judicial exception in the claim. See MPEP 2106.05(g) and 2106.05(d)(ii), third list, (iv).
The claim is therefore ineligible under 35 USC 101.
Regarding claim 19, “wherein determining reservoir connectivity comprises comparing an amount of the deuterated diamondoids detected after the injection and an amount of diamondoids detected prior to the injection” is directed to math because this comparison is used to determine concentration, distribution, or consumption rates of substances by calculating the difference or ratio between the two states.
Regarding claim 20, “injecting a second type of deuterated diamondoids in a second injection well and monitoring the presence of the second type of deuterated diamondoids to determine reservoir connectivity between the second injection well and the production well” does not integrate the judicial exception into a practical application. It does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
Hence the claims 18-20 are treated as ineligible subject matter under 35 U.S.C. § 101.
Other Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Terashima et al. (JP WO2011/099351 A1) disclose a diamondoid obtained by synthesis without using a catalyst or an organic solvent. In the synthesizer 1, a supercritical fluid or subcritical fluid in which adamantane is dissolved is generated in the pressure-resistant vessel 2, and plasma is generated in the supercritical fluid or subcritical fluid. As a result, the synthesis apparatus 1 can generate secondary to 15th diamondoids bonded with a plurality of adamantanes, and isomers of these secondary to 15th diamondoids. And higher order diamondoids can also be obtained by synthesis.
Myer et al. (“In Situ Logs of Gas Composition of CO2-ECBM Trial in Buchanan County, Virginia, with Downhole Reservoir Raman System”) disclose
injection of carbon dioxide into coal seams has long been suggested as a means to enhance coalbed methane production through the preferential adsorption of carbon dioxide over methane on the coal surface. Now there is a downhole tool available that measures gas composition from individual coal seams in-situ. This paper focuses on the application of this tool in an oilfield setting and discusses the quantification of the impact of carbon dioxide injection on methane production.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN H LE whose telephone number is (571)272-2275. The examiner can normally be reached on Monday-Friday from 7:00am – 3:30pm Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby A. Turner can be reached on (571) 272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN H LE/Primary Examiner, Art Unit 2857