Ex Parte Boyer et al

Board of Patent Appeals and Interferences

Mar 27, 2009

11228109 (B.P.A.I. Mar. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LEMOYNE BOYER and DONEIL M. DORADO
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Appeal 2008-6164
Application 11/228,109
Technology Center 3700
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Decided:1 March 27, 2009
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Before WILLIAM F. PATE III, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/228,109

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STATEMENT OF CASE
This is an appeal from the final rejection of claims 1-12. These are
the only claims in the application. We have jurisdiction under 35 U.S.C. §§
134 and 6.
Rod float is a condition experienced in heavy crude oil production where
the sucker rod falls slower than the pumping unit downstroke motion. It can
damage equipment resulting in increased downtime and maintenance costs.
Spec. 1:16-18. The claimed invention is directed to a method for mitigating
rod float in an oil well rod pumping apparatus. The method operates a
controller to compare actual operating load level with a predetermined load
level that is indicative of rod float. If a rod float condition is detected, the
controller controls the speed of the pumping motor with a variable speed
drive.
Claim 1, reproduced below, is further illustrative of the claimed subject
matter.
1. In a rod pumping arrangement including

a motor (12) coupled by a mechanical linkage to a
polished rod (32), rod string (36), subsurface pump (44)
assembly, wherein said motor and mechanical linkage cause
said assembly to reciprocate in a borehole, and a variable
frequency drive (8) coupled to said motor (12) for controlling
speed of rotation of said motor, a method for mitigating rod
float comprising the steps of,

providing a controller (52) with software and data
memory and with a signal path (9) provided between the
controller (52) and said variable frequency drive (8),

producing an operating load level representative of
polished rod (32) load during assembly downstroke while said
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assembly is reciprocating in said borehole,

operating said software in said controller to compare said
operating load level with a predetermined load limit indicative
of a rod float condition stored in said data memory and
generating a low load signal only while said operating load
level is below said predetermined load limit,

applying said low load signal via a signal path (9) to said
variable frequency drive (8), and

controlling the speed of said motor (12) with said
variable speed drive as long as said low load signal is applied.

REFERENCE
The reference of record relied upon by the examiner as evidence of
anticipation and obviousness is:
Watson US 6,414,455 B1 Jul. 2, 2002

REJECTIONS
Claims 1-8 and stand rejected under 35 U.S.C. § 102 as being anticipated
by Watson.
Claims 9-12 stand rejected under 35 U.S.C. § 103 as unpatentable over
Watson.
ISSUES
Appellants’ sole argument is that the Watson patent does not teach the
claim limitation of comparing said operating load level with a predetermined
load limit indicative of rod float condition. Accordingly, the issue on appeal
is whether the Appellants have established that the Examiner erred in
rejecting claims 1-12 as anticipated or obvious over Watson. This issue

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turns on whether Watson teaches comparing an operating load level with a
predetermined load limit which is indicative of a rod float condition.

FINDINGS OF FACT
1. Appellants admit that Watson discloses the control of a rod
pump by driving the rod pump with a variable speed drive motor and
controlling the speed of the motor to produce the desired result at the rod
pump. See Br. 3: 21-24. The purpose of the patent of Watson is to achieve
energy efficiency or to control electrical pumping cost by adjusting the
motor speed for varying parts of the pump cycle. The control circuit of
Watson is provided with a set of operational parameters such as a voltage
frequency profile and a set point parameter appropriate for either a regulated
constant torque or regulated constant speed mode. See col. 3, ll. 6-10. The
instantaneous motor load profile may be obtained by using a load sensor and
a speed sensor. See col. 3, ll. 17 and 18. Normal operation of Watson slows
the pump upstroke when it would otherwise require more power to maintain
a constant speed or torque. Watson also speeds up the motor during portions
of the pump cycle when otherwise it would be subject to regeneration
conditions in a constant speed or torque mode as in a downstroke. See
Watson col. 11, ll. 26-44; col. 13, ll. 36-54; and col. 14, ll. 5-13.
2. In the present invention, which is directed to mitigating rod float in
rod pump wells during the downstroke when a rod float condition is
detected, the motor is slowed during downstroke to ameliorate the rod float
condition. See Spec. 1:13-18, 23 and 5:5-7.
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PRINCIPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002). Express anticipation occurs when the
prior art expressly discloses each limitation (i.e., each element) of a claim.
Id. In addition, “[i]t is well settled that a prior art reference may anticipate
when the claim limitations not expressly found in that reference are
nonetheless inherent in it.” Id.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. 398 at ___, 127 S. Ct. at
1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
ANALYSIS
The apparatus disclosed for use in Watson and the apparatus that
Appellants disclose are similar. The purposes of the inventions are different,
however. In Watson, the controller is configured for the purpose of energy
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efficiency. On the other hand, Appellants’ invention is directed to heavy
crude wells where rod float occurs. Rod float is the tendency of the pump
rod to fall slower than the speed of the pump jack due to the viscosity of
heavy crude oil in the well. We agree with Appellants and the Examiner that
this rod float is well known in the art. Watson does not contemplate
operating his system in heavy crude and heavy crude is not mentioned.
The Examiner points to Watson’s constant torque mode wherein
Watson discloses operating the software to compare the actual operating
load level with the predetermined load limit. See Ans.: 4-5. However, on
this point, we agree with Appellants that there is no correlation between
Watson’s torque set point and rod float.
We note the Examiner’s argument bridging pages 6 and 7 of the
Answer, “[t]herefore, anytime the operating load level is below said
predetermined load limit it could be indicative of a rod float, even if that is
potentially not the case (emphasis supplied).” We must remind the
Examiner that inherency in a reference cannot be based on a mere
possibility. “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999).
On balance, we agree with the Appellants that the claim limitation of
comparing said operating load level with a predetermined load limit
indicative of a rod float condition is the crux of Appellants’ method claims
on appeal. The patent to Watson does not disclose this method step.
Consequently, the patent to Watson does not disclose a method for
mitigating rod float. Therefore, the Appellants have established that the
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Examiner erred in finding that the subject matter of claims 1-8 lacks novelty
over Watson. For the same reason, the Appellants have established that the
Examiner erred in determining that Watson would have rendered the subject
matter of claims 9-12 prima facie obvious.

CONCLUSION
The Appellants have established that the Examiner erred in rejecting
claims 1-8 on the grounds of lack of novelty and claims 9-12 on the ground
of obviousness. The rejections of all of the claims on appeal are reversed.

REVERSED

Vsh

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