Rather than presenting their arguments orally at the IPO, Halliburton asked for a review of the papers on file. This is a cost-effective option in which a hearing officer reviews the decision of the examiner. It is not often used.
Halliburton’s application described a method of oil rig analysis. Halliburton and the examiner disagreed during prosecution on the contribution provided by the claims over the prior art. The hearing officer mostly agreed with the examiner and considered that the contribution “lies in generating a report and automatically interpreting the report to identify and diagnose wellsite operation errors and flagging wellsite operational errors, failures and/or operation inefficiencies”.
The hearing officer considered that the contribution over the art was non-technical. So far, so normal. Here there seemed to significant similarities with the approach of the European Patent Office. Essentially, the examiner distilled the invention and stated that what was provided did not have the requisite technical character to be a patentable invention.
The hearing officer then took each of the exclusions in turn and analysed each one. Separately, the officer determined that the claims fell within each exclusion. The claims first failed each of the 5 ‘signposts’ for indicating that a computer program may be patentable. The hearing officer then determined that the claimed steps were “the application of well-known mathematical manipulation methods to the wellsite data” and that “it [is] difficult to see how the present application makes a contribution beyond that of a computer implementation of a series of mathematical manipulation of data.” Finally, since “the contribution lies in automatically generating a report and flagging wellsite operational errors, failures and/or operation inefficiencies … it appears that the claimed invention also relates to the presentation of information as such”.
That the claims were considered to fall within the scope of multiple exclusions is interesting and raises a series of questions. For example, are the exclusions exclusive from one another or are they all interrelated or overlapping in scope (if so, to what extent)?
In the past Halliburton have challenged the IPO in the High Court. On that occasion, the court ruled that the mental act exclusion should be applied more narrowly than was submitted by the IPO. Would the IPO have also concluded that this idea was a mental act had Halliburton not had the scope of this exclusion narrowed by the High Court? Should the rationale applied by the court for the mental act being a narrow exclusion, not also apply to the other exclusions?