Ex Parte Beck et alDownload PDFPatent Trial and Appeal BoardSep 19, 201410655778 (P.T.A.B. Sep. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS L. BECK, ROBB G. ANDERSON, and STEVEN J. OLSON ____________________ Appeal 2012-006721 Application 10/655,778 Technology Center 3700 ____________________ Before SALLY G. LANE, JOHN G. NEW, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 file this appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 17–19, 21, 23, 24, 26, and 69–73.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as Unico, Inc. App. Br. 3. 2 Claims 20, 25, and 74 were allowed, and claims 1–16, 22, 27–68, and 75– 91 were canceled. See App. Br. 3. Appeal 2012-006721 Application 10/655,778 2 Claimed Subject Matter The claims are directed to a control system for progressing cavity pumps. Claim 17, reproduced below, is illustrative of the claimed subject matter: 17. A method of controlling a progressing cavity pump for transferring fluid within a fluid system, wherein the progressing cavity pump is coupled to an electric motor, the method comprising the steps of: determining in real-time values of torque and speed inputs to the progressing cavity pump without downhole sensors by measuring electrical voltages applied to the motor and currents drawn by the motor, and using the measured values of electrical voltages applied to the motor and currents drawn by the motor to calculate the values of torque and speed inputs to the progressing cavity pump; using the real-time values of torque and speed inputs to calculate one or more values representing the performance of the progressing cavity pump; using the progressing cavity pump performance values to produce one or more command signals; and using the command signals to control in real-time closed- loop basis the speed of the progressing cavity pump. Rejections The Examiner maintains the following rejections of claims 17–19, 21, 23, 24, 26, and 69–73 in the Answer: (1) Claims 17–19, 21, 23, 24, 26, and 69–72 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Norris (US 5,996,691, issued Dec. 7, 1999) and Odachi (US 6,869,272 B2, issued Mar. 22, 2005); Appeal 2012-006721 Application 10/655,778 3 (2) Claim 73 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Norris, Odachi, and Kawabata (US 6,244,831 B1, issued June 12, 2001).3 ANALYSIS Rejection of claim 17 and its dependents based on Norris and Odachi Appellants argue that the Examiner’s rejection of claim 17 is legally and factually deficient, and should be overturned for no less than four independently sufficient reasons. 1. The Examiner has not made a finding of the level of ordinary skill in the art. 2. The Examiner has not engaged in the type of analysis required to make a prima facie case of obviousness. 3. The Norris et al. reference teaches away from combination with the Odachi et al. reference and from the solution of the present invention as claimed. And, 4. The combination of the Norris et al. reference and the Odachi et al. reference does not teach or suggest each and every element of the present Claim 17. App. Br. 9. We will address each argument in turn. 1) Level of Ordinary Skill in the Art Appellants argue that the Examiner fails to make findings as to the level of ordinary skill in the art and that the rejection should be reversed on that basis. App. Br. 10–11. Appellants do not present any argument or evidence as to the appropriate level of ordinary skill or how the Examiner’s rejection may have been affected by the alleged lack of findings on this issue. See id. We are therefore not persuaded by Appellants’ arguments. 3 The Examiner’s Answer states that claim 73 is rejected as unpatentable over Norris and Odachi (Ans. 4), but the only substantive rejection provided includes the Kawabata reference (see Ans. 9–10). Appeal 2012-006721 Application 10/655,778 4 In addition, “[a] specific finding on the level of skill in the art is not . . . required where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 164–65 (Fed. Cir. 1985). The Board has previously re- affirmed that “[t]he skill-level determination is an important guarantee of objectivity in an obviousness analysis.” Ex parte Jud, 85 U.S.P.Q.2d 1280, 1282 (BPAI 2007) (informative) (denying relief requested on rehearing), available at http://www.uspto.gov/ip/boards/bpai/decisions/inform/ rh061061.pdf. “Neither the statute nor the [Graham v. John Deere Co., 383 U.S. 1 (1966) (“Graham”)] factors, however, prescribe a specific format for the skill-level determination.” Id. “While the examiner did not have an expressly denominated finding regarding the level of skill in the art, [Appellants are] on notice about what the examiner thought one of skill in the art would have known and why.” Id. at 1284. “By outlining what one would know from references, the examiner met [his] burden to establish the skill level in the way it is typically met during examination.” Id. Appellants “fail[] to argue or provide a persuasive basis for a different finding.” Id. Appellants also fail to respond to the Examiner’s more specific findings in the Answer. See Ans. 12 (“In the present case, the person having ordinary skill in the art would have made the connection between the teachings of Odachi relating to measuring torque and speed and the teachings of Norris computing motor load, as the relationship between torque, speed and load is within the knowledge of a person having ordinary skill in the art.”). Accordingly, we decline to disturb the Examiner’s findings or conclusions on this basis. Appeal 2012-006721 Application 10/655,778 5 2) The Examiner’s Reasoning Appellants argue that the Examiner’s explanation of the motivation for combining elements of Norris and Odachi to arrive at a device that adjusts motor parameters is insufficient, and also that “such reasoning would not support a combination of references that renders the present Claim 17 unpatentable, as Claim 17 provides more than a method of adjusting motor parameters to keep a fluid transfer device operating efficiently.” App. Br. 12. Appellants argue that the reasoning does not explain why one of ordinary skill in the art would adopt some portions of Odachi and not others, and that the proposed modification is not logical and would change the operation of Norris. Id. at 1213. The Examiner’s reasoning is clarified significantly in the Examiner’s Answer: Note that Norris teaches the use of a complex computation including the weight of the pump and the torque rating of the motor driving the pump (the torque rating being the maximum torque the motor can operate at) coupled with a real-time measurement of the downward force on the pump to determine the real-time load on the pump. Odachi’s teaching that measurements of voltage and current drawn by the motor may be used to derive [] the torque and speed of the motor (and by extension, as one of ordinary skill in the art would be aware, the load on the motor) may be used to simplify the calculations required in Norris. One of ordinary skill in the art presented with these two references would recognize the usefulness of adapting the parameters of Odachi in the real-time control of Norris even though Odachi does not teach real-time control of the motor based on these parameters. By contending otherwise, [Applicants] appear[] to be arguing against the references individually, as only Odachi alone fails to teach in real-time control. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Appeal 2012-006721 Application 10/655,778 6 Ans. 13. We find this reasoning to be a sufficient articulation of the rational underpinning for combining Norris and Odachi in the way the Examiner explained that one of ordinary skill in the art would have combined them. Appellants’ primary response to the Examiner’s reasoning in the Answer is that it does not make sense that one of ordinary skill in the art “would recognize the usefulness of adapting the parameter of Odachi in the real-time control of Norris” because “Odachi does not teach real-time control of the motor.” Reply Br. 2–3 (quoting Ans. 13). Under Appellants’ reasoning, two references could never be combined in an obviousness analysis because one of them will always fail to teach some element of the invention. The point made by the Examiner is that Norris teaches real-time control of the pump, and Odachi teaches simplification of the measurements needed for the real-time control taught in Norris by eliminating the need for a separate load sensor. In other words, to the extent Appellants’ advance over Norris consisted in elimination of the load sensor and reliance instead on the relationship of the motor’s speed and torque to its voltage and current, Odachi already suggested such a modification by performing similar calculations without the need for a separate load sensor. Appellants argue that the Examiner’s reasoning does not explain why one of ordinary skill in the art would not also incorporate Odachi’s teaching that its motor is run at a constant torque and then constant speed. App. Br. 12–13. We disagree. The Examiner’s reasoning starts from the primary reference Norris and explains why one of ordinary skill in the art would make the narrow modification of eliminating the need for the load sensor of Norris and rely on other measurements (as taught in Odachi) to achieve the same results. See Ans. 13. There is no similar motivation for adopting Odachi’s particular mode of operation for a refrigerant compressor, the Appeal 2012-006721 Application 10/655,778 7 purpose of which is fully explained in Odachi. See Odachi col. 2, ll. 3–26. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellants also argue that “the suggested modification of Norris et al. to include the system of Odachi et al. is not logical since Norris et al. already controls the motor current and voltage with the signal from the load cell 38.” App. Br. 13. The Examiner found, however, that one of ordinary skill in the art would recognize that the teachings of Odachi may readily be used to simplify measurement in Norris. See Ans. 12–13. Choosing from among known methods of measurement of pump system parameters a method that requires fewer parts or simpler calculations is not illogical. Appellants also state that “if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification” and that “if the proposed modification or combination of the prior art would change the [principle] of operation of the prior art invention being modified, then the teaching of the references are not sufficient to render the claims prima facie obvious.” Appeal Br. 13. Appellants appear to suggest that modification of Norris to rely on current and voltage measurements as in Odachi makes Norris unsatisfactory for its intended purpose and changes the principle of operation of Norris.4 Modification of a prior art reference will, by definition, result in some changes. Norris’ intended purpose of efficiently controlling a pump, 4 Appellants later state that “Odachi et al.’s constant torque and constant speed would make Norris et al. inoperative for its intended purpose and therefore the combination is not obvious.” App. Br. 15. The Examiner does not propose that one of ordinary skill in the art would have modified Norris in that way. Appeal 2012-006721 Application 10/655,778 8 however, would only be hindered to the same extent that Appellants’ intended purpose would be hindered in using substitute measurements to estimate pumping performance. Norris’ basic principle of measuring operating conditions in real time to make adjustments is also not changed. Appellants have not shown how potential elimination of a purpose for the load sensor in Norris, or a change in the calculations made based on measuring different parameters, would render the prior art inoperable or change the basic principle of operation. Accordingly, we are not persuaded that the Examiner erred in the articulated reasoning used to support the conclusion of obviousness. 3) Teaching Away Appellants argue that Norris teaches away from the combination with Odachi “by disclosing that pump performance parameters are determined directly only through use of load sensors 38.” App. Br. 14. “[M]ere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Even where the prior art describes an alternative as “inferior,” it may not teach away. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Here, Appellants do not point to any disclosure in Norris that would “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d at 1201. A reference that does not suggest that a proposed modification was unlikely to work does not teach away from that modification. See Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (“Baxter apparently misapprehends what it means to ‘teach away’ from a patented invention. Appeal 2012-006721 Application 10/655,778 9 ‘[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.’” (quoting In re Gurley, 27 F.3d at 553)). Appellants also suggest that Norris teaches away from the combination or that the combination is otherwise unobvious because the need for the sensor in Norris is eliminated but its function is retained, citing MPEP § 2144.04 II.B in support. See App. Br. 15; Reply Br. 4. MPEP § 2144.04 provides that “omission of an element and retention of its function is an indicia of unobviousness” and cites In re Edge, 359 F.2d 896 (CCPA 1966). Edge states that “[w]hile it may often be true that the mere omission of an element together with its function does not produce a patentable invention, it may also be unobvious to omit an element while retaining its function.” Edge, 359 F.2d at 899. Here, the need for the load sensor in Norris may be eliminated, but that is because Odachi teaches measurement of other parameters. Thus, modification in view of Odachi is a substitution, not an omission, even though the current and voltage that Odachi teaches to measure are present in Norris. We, therefore, do not agree that MPEP § 2144.04 applies here. Review of the facts in Edge confirms that it is inapplicable here. Edge involved a claim to a “business bonus card” that had “a thin layer of metal” bonded directly to a face of the card and obscured indicia of the bonus. Edge, 359 F.2d at 897. One claim specifically recited that the thin layer of metal was “capable of being erased to enable the denomination of said indicia to be ascertained.” Id. The Washington Post prior art taught a similar sales promotional card, “the sole significant difference being that the indicia-obscuring means is a rectangular panel of relatively heavy, high Appeal 2012-006721 Application 10/655,778 10 tensile strength, opaque leatherette paper which is attached to the card by zigzag stitching in such manner as allegedly to prevent unnoticed removal and replacement.” Id. at 898. Another prior art reference, Neville, taught an erasable ink/metal film on a card, but also included an “intermediate transparent protective layer, thereby preventing destruction of the printed indicia during erasure of the obscuring cover.” Id. In Edge, the Board of Patent Appeals agreed with the Examiner that it would have been obvious “[t]o substitute for the covering material of the Washington Post Disclosure (sewed on leatherette), a metallic coating which may be removed by erasing,” and that to omit the transparent layer of Neville and its function would involve no more than a matter of choice. Id. “Being unable to find in the art any suggestion of a thin layer of metal bonded directly to paper-like card, obscuring a printed indicia thereon, yet ‘capable of being erased to enable the denomination of said indicia to be ascertained,’” the CCPA reversed as to that claim. Id. at 899. The court sustained the obviousness rejections of other claims that did not recite that the thin metal layer was capable of being erased. See id. The reasoning of Edge is inapplicable here where the measurement of one set of parameters is substituted for measurement of a different set, and the prior art itself teaches that the desired functions can be accomplished without the separate sensor as in Norris. Odachi teaches that the torque is substantially proportional to the current supplied to the motor and that voltage and current can be used to estimate and control speed and torque. Odachi Fig. 4; col. 4, ll. 21–22; col. 5, ll. 52–65; col. 6, ll. 1–14. Incorporating these teachings into Norris, which Appellants do not argue would have been beyond the ability of the ordinarily skilled artisan, would eliminate the need for the dedicated sensor in Norris, even if the sensor were Appeal 2012-006721 Application 10/655,778 11 retained (for verification, backup, or other purposes). We note that claim 17 does not preclude an above-ground load sensor as in Norris (col. 4, l. 54), and only excludes “downhole sensors.” Moreover, Odachi explicitly teaches that in “the present embodiment, the motor 1 is controlled by the sensorless method.” Col. 4, ll. 31–32. Accordingly, the modification of Norris in accordance with Odachi is distinguished from the proposed modification in Edge, where the transparent layer was precluded by the claims and there was no suggestion in the prior art that elimination of the transparent layer was technically feasible with a metal/ink layer rather than a leatherette covering. For the foregoing reasons, Norris does not teach away from the proposed modification. 4) Missing Elements Appellants argue that the proposed combination does not teach or suggest several elements of claim 17. Appellants state that “[t]he Odachi et al. reference does not disclose, teach, or suggest using real-time values of torque and speed inputs to calculate one or more values representing the performance of the progressing cavity pump,” and that instead it “specifically teaches driving the motor at a constant predetermined torque for a set distance, and then, regardless of when this distance is reached, driving the motor at a constant speed.” Appeal Br. 17. As we have already discussed, the Examiner does not maintain that Odachi teaches real-time control in the way that Norris does. We agree with the Examiner that Appellants “appear[] to be arguing against the references individually.” Ans. 13. Once the relevant teachings of Odachi regarding measurement and control of current, voltage, speed, and torque are incorporated into the Norris device, “real-time values of torque Appeal 2012-006721 Application 10/655,778 12 and speed inputs” are used “to calculate one or more values representing the performance of the progressing cavity pump,” namely fluid level and pump load. See Norris col. 4, ll. 37–47. Appellants make similar arguments with respect to the claim elements reciting “using the progressing cavity pump performance values to produce one or more command signals” and “using the command signals to control in real-time closed-loop basis the speed of the progressing cavity pump.” App. Br. 17–18. Again, Appellants focus on the Odachi reference and not the combination as proposed by the Examiner. Appellants’ statement that “[t]he combination of Norris et al. and Odachi et al. as asserted by the Examiner would not result in what is described and claimed in the present application as the Odachi et al. and Norris et al. references also do not teach these elements, as recognized by the Examiner” (App. Br. 18), does not convince us otherwise. As explained by the Examiner, “Norris teaches a progressing cavity pump substantially similar to that of the claimed invention that uses real- time parameters to control the load on the downhole pump.” Ans. 13. In particular, Norris teaches “a control mechanism 44 that measures the dynamic downward pull on the pump caused by pump operation and generates an electrical control signal that controls the motor speed to limit the rate of pump operation to produce a preselected optimum range of pump down rate and casing liquid depth.” Norris col. 4, ll. 31–36. “If . . . the pump load or rotation rate changes unexpectedly or dramatically, this can indicate that the pump has run dry or the pump is sucking gas. In such a case the controller may automatically slow the pump to alleviate the condition.” Id. at col. 7, ll. 7–11. Appeal 2012-006721 Application 10/655,778 13 The difference between Norris and claim 17 lies in how the performance values are calculated. In Norris, a sensor senses the downward pull on the pump. See id. at col. 4, ll. 31–33. Norris further teaches: After other factors are taken into account, such as pump dimension, pump efficiency, and pump torque and the weight of the pump and pump rod are subtracted from the overall downward force on the pump rod as measured by sensor 38, the sensor produces an output signal representative of the pumping load on the pump, and this in turn is representative of the liquid level in the outer casing. Id. at col. 4, ll. 41–47. Odachi teaches a pump control method that measures current and voltage of the motor and is able to drive the motor with a specified torque or speed based on the relationships between current, voltage, torque, and speed. See Odachi col. 4, ll. 10–29; col. 5, ll. 52–65; col. 6, ll. 1–14. Appellants do not challenge the Examiner’s finding that “the person having ordinary skill in the art would have made the connection between the teachings of Odachi relating to measuring torque and speed and the teachings of Norris computing motor load, as the relationship between torque, speed and load is within the knowledge of a person having ordinary skill in the art” (Ans. 12). Accordingly, we agree with the Examiner that the combination of Norris and Odachi teaches all elements of claim 17. 5) Conclusion as to Claim 17 and its Dependents For the foregoing reasons, we affirm the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Norris and Odachi. Dependent claims 18, 19, 21, 23, 24, and 26 are not argued separately (see App. Br. 18) and fall with claim 17. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-006721 Application 10/655,778 14 Rejection of claim 69 and its dependents based on Norris and Odachi Claim 69 is an apparatus claim that uses “means for” language for several elements, but is otherwise very similar to claim 17: 69. A pump control system for controlling a progressing cavity pump for transferring fluid within a fluid system, wherein the progressing cavity pump is coupled to an electric motor, the pump control system comprising: means for determining in real-time values of torque and speed inputs to the progressing cavity pump, without downhole sensors, by measuring electrical voltages applied to the motor and currents drawn by the motor, and using the measured values of electrical voltages applied to the motor and currents drawn by the motor to calculate the values of torque and speed inputs to the progressing cavity pump; means for using the real-time values of torque and speed inputs to calculate one or more values representing the performance of the progressing cavity pump; and means for using the progressing cavity pump performance values to produce one or more command signals for controlling in a real-time closed-loop basis the speed of the progressing cavity pump. Appellants’ brief includes a section designated as a “Separate Argument for Claim 69.” App. Br. 19. The arguments for claim 69 overlap those provided in support of claim 17 and do not appear to be specific to claim 69’s status as an apparatus claim, recitation of “means for” elements, or any other difference between the claims. We affirm the rejection of claim 69 for the same reasons given for claim 17. Dependent claims 70–73 are not argued separately from claim 69 (see App. Br. 29) and fall with claim 69. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-006721 Application 10/655,778 15 DECISION Upon consideration of the record as a whole in light of Appellants’ contentions and the preponderance of relevant evidence, we affirm the Examiner’s decision to reject claims 17–19, 21, 23, 24, 26, and 69–73. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). 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