Halliburton Energy Services, Inc.

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.

16/489,800 08/29/2019 Ahmed Elsayed Fouda 1560-053302 3504

112839 7590 07/10/2025 EXAMINER

C. Tumey Law Group PLLC - HES

C. Tumey Law

DINH, LYNDA

PO Box 890226 Houston, TX 77062-9998

ART UNIT PAPER NUMBER

2857

NOTIFICATION DATE DELIVERY MODE

07/10/2025 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):

bdempsey@ctumeylawgroup.com

ctumey@ctumeylawgroup.com

docketing@ctumeylawgroup.com

PTOL-90A (Rev. 04/07)

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UNITED STATES PATENT AND TRADEMARK OFFICE

——————

BEFORE THE PATENT TRIAL AND APPEAL BOARD

——————

Ex parte AHMED ELSAYED FOUDA, PAUL CHIN LING CHANG, and

ILKER R. CAPOGLU

——————

Appeal 2024-003002 Application 16/489,800 Technology Center 2800 ——————

Before JAMESON LEE, MICHELLE N. WORMMEESTER, and BACH V. HOANG, Administrative Patent Judges. LEE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant¹appeals from the Examiner's decision to reject claims 1, 3-6, 8-10, 12, 13, 21-25, and 28. See Non-Final Act. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

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Appeal 2024-003002 Application 16/489,800

CLAIMED SUBJECT MATTER

The invention relates to "methods for identifying artifacts with an electromagnetic logging tool in an eccentric pipe configuration comprising a plurality of pipes." Spec. ¶ 13. The independent claims are claims 1, 24, and 28. Claim 1, reproduced below, is representative of all the independent claims and illustrates the claimed subject matter:

1. A method for estimating metal thickness on a plurality of casing strings in a cased hole, comprising:

obtaining a multi-channel induction measurement using a casing inspection tool;

constructing a first forward model of the multi-channel induction measurement;

using the first forward model in an initial guess estimation algorithm to estimate a first set of metal thicknesses of the plurality of casing strings, wherein the initial guess estimation algorithm places bounds on the metal thicknesses;

preparing a second forward model based on at least one thickness from the first set of metal thicknesses of the plurality of casing strings;

using the second forward model and the first set of metal thicknesses in an inversion scheme to estimate a final set of metal thicknesses, wherein the inversion scheme places no bounds on the metal thicknesses; and using the final set of metal thicknesses to make one or more well intervention decisions, wherein well intervention decisions comprise repairing casing, removing casing, patching defects, and/or removing defects within the casing.

Appeal Br. 16 (Claims App.).

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Appeal 2024-003002 Application 16/489,800

REJECTION

The Examiner maintains²the following rejection:

1. Claims 1, 3-6, 8-10, 12, 13, 21-25, 28 stand rejected under 35 U.S.C. § 101 as being directed to patent ineligible subject matter, "a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more." Non-Final Act. 4.

OPINION

We review appealed rejections for reversible error based upon the arguments and evidence provided for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv) (2023); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,

637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that, even if the Examiner had failed to make a prima facie case, "it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). For reasons explained below, we conclude that Appellant has not shown reversible error in the rejection of claims 1, 3-6, 8-10, 12, 13, 21-25, and 28 under 35 U.S.C. § 101.

In January 2019, the U.S. Patent and Trademark Office ("USPTO") published revised guidance on the application of 35 U.S.C. § 101 for determining patent subject matter eligibility.³The USPTO's current

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Appeal 2024-003002 Application 16/489,800 eligibility guidance is found in the Ninth Edition, Revision 01.2024 (revised November 2024) of the Manual of Patent Examination Procedure ("MPEP"), and particularly within Sections 2103 through 2106.07(c). "Because the MPEP now incorporates the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update (October 2019 Update), and the Berkheimer Memo,^[4] all references to those materials should now be directed to the MPEP." See USPTO, Subject Matter Eligibility, https://www.uspto.gov/patent/laws-and- regulations/examination-policy/subject-matter-eligibility (emphasis added). All references to the MPEP throughout this Decision are to the Ninth Edition, Revision 01.2024 (Last Revised November 2024), unless otherwise indicated.

The proper eligibility analysis entails, at Step 1, considering whether the claimed subject matter falls within one of the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter). MPEP § 2106.03. If it is, then we move to step 2, and if it is not then the claim is not eligible subject matter. MPEP § 2106 (subject matter eligibility test for product and processes flowchart).

Step 2 of the analysis is a two-part test to identify whether claims are directed to a judicial exception, i.e., an abstract idea, law of nature, or USPTO personnel are, as a matter of internal agency management, expected to follow the guidance." 2019 Revised Guidance, 84 Fed. Reg. at 51; see also October 2019 Update 1.

4 Memorandum of Deputy Commissioner for Patent Examination Policy, dated April 19, 2018, referring to Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).

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Appeal 2024-003002 Application 16/489,800 natural phenomenon (Step 2A; see MPEP § 2106.04), and then to evaluate if additional elements of the claim provide an inventive concept; that is, whether they provide "significantly more" than the recited judicial exception (Step 2B; see MPEP § 2106.05).

Step 2A is a two-pronged inquiry. "Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?" MPEP § 2106.04.II.A.1. "Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?" MPEP § 2106.04.II.A.2. Only after a determination is made that the claimed subject matter is directed to a judicial exception under Prong 1 of Step 2A do we proceed to the Prong Two inquiry of Step 2A and then possibly to Step 2B. "The Step 2A Prong One analysis articulated in MPEP § 2106.04

. . . require[es] a claim to recite (i.e., set forth or describe) an abstract idea in Prong One before proceeding to the Prong Two inquiry." MPEP § 2106.04(a)(1). If the claim as a whole is not directed to a judicial exception, the eligibility analysis is concluded. MPEP § 2106.04.II. We agree with the Examiner that the claimed invention is directed to an abstract idea of using the claimed "final set of metal thicknesses to make one or more well intervention decisions." Ans. 4. We adopt the portion of the Examiner's Answer detailing the findings on the MPEP two- part framework as applied to Appellant's claimed invention. Ans. 4-6. Appellant argues that the limitation "repairing casing, removing casing, patching defects, and/or removing defects within the casing," as recited in all independent claims (emphasis added), is not an abstract mental process. Appeal Br. 9; Reply Br. 2. Appellant further argues that this limitation constitutes an additional element that integrates the claims into a

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Appeal 2024-003002 Application 16/489,800 practical application under step 2A of the Alice/MPEP framework. Reply Br. 2. We disagree.

The claim language quoted above by Appellant is incomplete, as it leaves out a key portion of the applicable limitation's text, which we reproduce and emphasize in bold below:

using the final set of metal thicknesses to make one or more well intervention decisions, wherein well intervention decisions comprise repairing casing, removing casing, patching defects, and/or removing defects within the casing. Appeal Br. 16 (Claims App.) (emphasis added). At its core, this limitation is about making one or more "intervention decisions" i.e., an evaluation or judgment, rather than performing the "intervention decisions" (repairing casing, removing casing, etc.). Because this limitation is directed to making an evaluation or judgment—a process performed in the human mind—it is directed to an abstract idea, namely, a mental process. MPEP § 2106.04(a).⁵

Appellant argues that the limitation "obtaining a multi-channel induction measurement using a casing inspection tool," as recited in all independent claims (emphasis added), is an additional element that integrates the claims into a practical application because the "casing inspection tool" is a particular machine that is integral to the claim. Appeal Br. 10 (emphasis added); Reply Br. 2 (referencing 2019 Revised Patent

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Appeal 2024-003002 Application 16/489,800 Subject Matter Eligibility Guidance, pg. 20; corresponding MPEP § 2106.05(b)). We disagree.

As the Examiner noted, the "casing inspection tool" of the independent claims is an insignificant extra-solution activity and does not integrate the claims into a practical application. Ans. 5; MPEP § 2106.05(g).⁶Specifically, the measurements obtained by the "casing inspection tool" are necessary in carrying out all determinations and model constructions recited by the claims, a fact Appellant underscores in its Reply Brief. Reply Br. 2 (Appellant stating, "the claims would not yield a meaningful result without 'a casing inspection tool.'" (emphasis added)). All uses of the recited judicial exception in the independent claims require data gathering by the "casing inspection tool" (emphasis added). Established case law and the MPEP state that limitations amounting to necessary data gathering constitute insignificant extra-solution activity and fail both to integrate the claim into a practical application and prove inventive concept.⁷MPEP § 2106.05(b) (stating a particular machine involved only in mere data gathering does not integrate the judicial exception or provide significantly more); see Mayo, 566 U.S. at 79; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).

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Appeal 2024-003002 Application 16/489,800 Thus, the casing inspection tool fails to pass muster at Step 2A Prong Two (integrating the claim into a practical application) and Step 2B (inventive concept). MPEP § 2106.05(g).⁸

Appellant argues that the limitation "using the second forward model and the first set of metal thicknesses in an inversion scheme to estimate a final set of metal thicknesses" as recited in the independent claims, is an improvement in computer functionality or other technology, and therefore, makes the claims patent eligible. Appeal Br. 10-11. We disagree. Improvements to computer functionality or other technology cannot be provided by a judicial exception alone. MPEP § 2106.05(a). Instead, it requires one or more additional elements. Id. Here, the judicial exception alone provides all of the alleged improvements, i.e., "using [a] second forward model" to "estimate . . . metal thicknesses", which is a mental process that can be conducted by a user with his/her mind. MPEP § 2106.05(a); Ans. 5. No computer operation is itself made to run faster or more efficiently. Appellant has not shown that the claimed subject matter is directed to an improvement in computer functionality or other technology. We are not persuaded that there is any such improvement in computer functionality and/or other technology.

For the foregoing reasons, the rejection of claims 1, 3-6, 8-10, 12, 13, 21-25, and 28 under 35 U.S.C. § 101 is affirmed.

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Appeal 2024-003002 Application 16/489,800

CONCLUSION

The following table summarizes our decision:

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

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