Ex Parte Coward

Patent Trial and Appeal Board

Jan 10, 2018

11441429 (P.T.A.B. Jan. 10, 2018)

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.
11/441,429 05/25/2006 Brian A. Coward H0010365-0104 9209
92720 7590
HONEYWELL/MUNCK
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
KILPATRICK, BRYAN T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
patentservices-us @ honey well, com
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN A. COWARD
Appeal 2017-000644
Application 11/441,4291
Technology Center 1700
Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant requests our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—21. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be Honeywell International Inc. See
Appeal Br. 2.
Appeal 2017-000644
Application 11/441,429
Independent claim 1 is illustrative of the claimed subject matter:2
1. A method, comprising:
performing a single oil production process that comprises
sequentially performing an oil and gas extraction process,
production separation processes, and a degassing process,
wherein the production separation processes comprise a first
test separation process followed by a second separation process
at a first pressure followed by a third separation process at a
second pressure lower than the first pressure, each separation
process controlled by a different process control system; and
controlling the oil and gas extraction process, the production
separation processes, and the degassing process using a
multivariable control matrix comprising a plurality of
manipulated and controlled variables to control at least one
process objective comprising backpressure and throughput of
the single oil production process;
wherein the plurality of manipulated variables comprises a
pressure variable of the second separation process, a pressure
variable of the third separation process, a suction pressure
variable, a temperature variable associated with a compressor in
the single oil production process, a backpressure variable
associated with a gas export line pipeline pressure, a degassing
drum pressure variable associated with the degassing process, a
number of choke flow controllers in the single oil production
process.
Independent claim 9 is drawn to a computer readable medium
embodying computer readable code for performing a corresponding method
as recited in claim 1, and independent claim 16 is directed to a control
system configured to control a corresponding method as recited in claim 1
2 Claim 1 (as well as claim 9) is interpreted consistent with Appellant’s
arguments to require all of the listed manipulated variables. The use of the
word “and” before “a number of choke flow controllers” should however be
used in both of claims 1 and 9, similar to the word “and” used in claim 16
before “a degassing drum pressure variable.”.
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Application 11/441,429
(Claims App 'x).
The following rejections made by the Examiner are on appeal:
a. Claims 1—21 are rejected under 35 U.S.C. § 112 (a) as failing to
comply with the written description requirement;
b. Claims 1—21 are rejected under 35 U.S.C. § 112 (b) for being
indefinite;
c. Claims 16—21 are rejected under the judicially-created doctrine of
obviousness-type double patenting over claims 13—17 of Coward (US
8,571,688 B2, issued October 29, 2013) (Ans. 5); and
d. Claims 1—21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saputelli et al. (Self-Learning Reservoir Management,
SPE Reservoir Evaluation & Engineering 534—547 (2005) (hereinafter
"Saputelli")), and Palke et al. (Nonlinear Optimization of Well Production
Considering Gas Lift and Phase Behavior, SPE International, Society of
Petroleum Engineers, Inc. 1—16 (1997) (hereinafter "Palke")).
ANALYSIS
We have reviewed each of Appellant’s arguments. However, we
determine that a preponderance of the evidence supports the Examiner’s
finding that the language of claims 1—21 is indefinite. Accordingly, we will
sustain the Examiner’s § 112(b) rejection for essentially those reasons
expressed in the Answer, including the Examiner’s Response to Argument
section.
On the other hand, we reverse the Examiner’s § 112 rejection for lack
of written description and the obviousness-type double patenting rejection
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essentially for the reasons expressed by Appellant in the briefs. We also
reverse the Examiner’s § 103 rejection for the reason detailed below.
We add the following primarily for emphasis.
The §112 Rejection for lack of written description
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991)). We must first interpret the disputed claim language by giving the
terms thereof the broadest reasonable interpretation in their ordinary usage
as they would be understood by one of ordinary skill in the art in light of
the written description in the specification, including the drawings, as
interpreted by this person, unless another meaning is intended by appellant
as established in the written description of the specification, and without
reading into the claims any limitation or particular embodiment disclosed in
the specification. See, e.g., In re Morris, 127 F.3d 1048, 1054—55 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
After review of the respective positions provided by Appellant and the
Examiner, we find that a preponderance of the evidence supports
Appellant’s position that the original disclosure provides support for the
claimed “a second separation process at a first pressure followed by a third
separation process at a second pressure lower than the first pressure” as
recited in independent claims 1, 9 and 16 (Appeal Br. 9-10; Spec. Fig. 2;
Reply Br. 2—3). As Appellant explains, Figure 2 of the Specification
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implicitly describes this relationship, since one of ordinary skill in the art
would have appreciated that a low pressure separator would inherently be at
a pressure lower than a high pressure separator (Appeal Br. 10; Reply Br. 3).
Accordingly, a preponderance of the evidence supports Appellant’s
position that one of ordinary skill in the art would have understood that the
originally filed Specification encompasses a second separation process at a
first pressure followed by a third separation process at a second pressure
lower than the first pressure as depicted in Figure 2. The claim need not use
the same words as the specification; it is enough that one of ordinary skill in
the art would recognize that the inventor invented what is claimed. Union
Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
In light of all these circumstances, one of ordinary skill would have
appreciated that Appellant was in possession of the claimed subject matter.
Accordingly, we reverse the Examiner’s § 112 rejection for lack of
written description.
The §112 Rejection for indefiniteness
During prosecution, claims are definite if they “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found the language of independent claims 1, 9, and 16
was indefinite, since each claim requires “a test separation process” but does
not recite what is tested or any particulars of what the test separation
comprises (Final Rej. 5, 6). Appellant points out that the Specification
describes a test separator 220 that performs a test separation process (Appeal
Br. 9-11), and urge that one of ordinary skill in the art would have
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understood that a “test separator” entails separating and metering well fluids,
citing a Wikipedia entry (Appeal Br. 12).
In prosecution before the PTO “[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F. 3d
1048, 1056 (Fed. Cir. 1997). The purpose of this requirement is to provide
the public with adequate notice of the boundaries of protection involved.
The time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1210-12
(PTAB 2008).
Due to the constantly changing nature of Wikipedia, a citation to
Wikipedia is of limited value. Moreover, Wikipedia is not considered to be
a reliable source.3 Nonetheless, the Wikipedia definition is replete with
alternatives and not specific as to what is tested by a test separator tests.
Notably, Appellant’s Specification does not state that the test separation
device meters the well fluids, nor does it specifically describe what, if any,
tests are performed on the separated and metered fluids, e.g., oil, gas, and/or
water per the cited Wikipedia entry. Appellant’s de facto contention that the
claim needs to first be interpreted to recite a separation and metering of well
fluids (either two-phase or three-phase per the Wikipedia entry), and then
3 See, e.g., Ex parte Three-Dimensional Media Group, Ltd., 2010 WL
3017280, at *17 (BPAI 2010) (“Wikipedia is generally not considered to be
as trustworthy as traditional sources for several reasons, for example,
because (1) it is not peer reviewed; (2) the authors are unknown; and (3)
apparently anyone can contribute to the source definition”). See also Bing
Shun Li v. Holder, 400 Fed. Appx. 854, 857 (5th Cir. 2010) (noting
Wikipedia's unreliability and citing Badasa v. Mukasey, 540 F.3d 909, 910-
11 (8th Cir. 2008)).
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understand that the test separator will be equipped with a meter for
measuring the fluid(s) for “potential tests, periodic production tests,
marginal well tests, etc.” as stated in the proffered Wikipedia entry (Appeal
Br. 12) is not persuasive. In light of the multiple interpretations applicable
to the claims, and the unreliability of the proffered Wikipedia evidence, it is
appropriate for Appellant to amend the claims to make clear which
interpretation is required.
Contrary to Appellant’s position, a preponderance of the evidence also
supports the Examiner’s position that “a temperature variable associated
with a compressor” does not make clear the metes and bounds of the claim
(Ans. 13; Reply Br. 6). How is this temperature variable of “a compressor”
related to the process recited in the claim? Likewise, “a suction pressure
variable” is not tied to any specific process step described in the claim.
Appellant’s arguments regarding the language of the dependent claim
4 “second plurality of manipulated variables” are not sufficient to overcome
the Examiner’s determination of indefmiteness (Reply Br. 6—8; Ans. 13).
For example only, Appellant’s contend that the variables listed in claim 4 are
“a number of separators, a number of compressors, and a number of
compressor stages” (Reply Br. 7). However, Appellant’s Specification
implies that the manipulated variables are not the number of each recited
component per se, but a process variable of each component, as set out in the
Specification description (e.g., Spec. 1 50, detailing various pressure
controllers, suction or discharge pressure controllers, compressor suction
cooler temperature controllers, etc.). Furthermore, claim 1 already details
three separation processes and manipulated variables that include pressure
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variables thereof. The relationship of “a number of separators” in claim 4 to
the three separation processes already recited in claim 1 is not clear.
Accordingly, we affirm the Examiner’s § 112, second paragraph
rejection of claims 1—21.
The Obviousness-type Double Patenting Rejection of claims 16—21
The Examiner’s position is that there is no distinction in the control
system claimed herein and the control system of US 8,571,688 because they
are “overlapping” and that different names “like degassing process control
system versus lift-gas extraction process control system” do not connote any
“distinction between both inventions” (Ans. 14). Appellant points out that
claim 16 herein and claim 13 of 8,571,688 recite distinctly different control
systems “configured to” (e.g., programmed to) control various aspects of
different elements in each respective claim (Appeal Br. 14, 15; Reply Br. 9,
10). We agree with Appellant that the Examiner has not properly interpreted
the claim language “configured to” contained in each set of claims to
describe the respective capabilities of each recited control system and has
thus not established a prima facie case for obviousness type double
patenting.
Accordingly, we reverse the Examiner’s obviousness type double
patenting rejection.
The §103 Rejection
Although the scope of the claims is unclear for reasons detailed above,
for the sake of judicial economy (since this is the second time this case has
been before us (see prior appeal 2013-004985)), we make the following
analysis of the obviousness rejection before us.
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The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRInt’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
While we agree with the Examiner that the applied prior art
combination of Saputelli and Dalke render obvious a multivariable control
system to control at least one process objective of backpressure or
throughput for an oil production system (e.g., Ans. 6—11, 15—18), a
preponderance of the evidence supports Appellant’s position that the
Examiner has not adequately established that the applied prior art teaches or
suggests the use of a degassing drum variable associated with the degassing
process (Appeal Br. 18; Reply Br. 12). The only disclosure relied upon by
the Examiner for the degassing process is the vent of Palke (Ans. 15, 16).
As Appellant de facto points out, a vent is not a degassing drum (Appeal Br.
17, 18; Reply Br. 11, 12). The Examiner does not rely upon any other
evidence to establish that a degassing drum, and concomitantly a degassing
drum variable, is either described or suggested by the prior art or would have
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been obvious based on the knowledge or inferences and creativity of the
ordinary artisan. For this reason alone, we are constrained to reverse the
§103 rejection.
Accordingly, the Examiner’s § 103 rejection is reversed with respect
to all of the claims on appeal.
In summary, the Examiner’s § 112 lack of written description
rejection, obviousness-type double patenting rejection and § 103 rejection
are all reversed. The Examiner’s § 112 indefmiteness rejection of all the
claims on appeal is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
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