Ex Parte Newman

Board of Patent Appeals and Interferences

Mar 6, 2009

10720594 (B.P.A.I. Mar. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FREDERIC M. NEWMAN
____________________

Appeal 2008-6279
Application 10/720,594
Technology Center 3600
____________________

Decided:1 March 6, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, 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 C.F.R. § 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).
Appeal 2008-6279
Application 10/720,594

2
STATEMENT OF THE CASE
Frederic M. Newman (Appellant) seeks our review under 35 U.S.C.
§ 134 from a final rejection of claims 4-6, 8, and 10-16. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to a system for controlling the
speed of the traveling block on an oil well service rig. (See Spec. 2, ll. 2-4;
id., 3, ll. 4-11.) According to the Appellant, the invention slows or stops the
block so as to avoid “crown out,” or traveling beyond the upper most safe
position. (Spec. 2, ll. 9-11; id., 3, ll. 8-9.) Claim 4, reproduced below, is
representative of the subject matter on appeal.
4. A process for controlling the speed of a traveling block
of a well workover rig, comprising:
determining the speed of the traveling block, the position
of the traveling block within a traveling range, and the weight
on the traveling block, wherein the weight of the traveling
block is measured by a weight sensing device;
comparing the speed of the traveling block to a maximum
velocity value, wherein the maximum velocity value is
determined as a function of the measured weight on the
traveling block and wherein the maximum velocity value in an
upper slow down zone of the traveling range of the traveling
block is lower than the maximum velocity value at a point
immediately below the upper slow down range, the length of
the upper slow down zone being proportional to the momentum
of the traveling block; and
Appeal 2008-6279
Application 10/720,594

3
adjusting the speed of the traveling block so as to
maintain its speed at or below the maximum velocity value.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Richardson US 4,545,017 Oct. 1, 1985
Ruddy US 6,527,130 B2 March 4, 2003
Claims 4-6, 8, and 10-16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Richardson and Ruddy.

ISSUE
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 4-6, 8, and 10-16 under 35 U.S.C.
§ 103(a) as being unpatentable over Richardson and Ruddy.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Richardson discloses a computerized system for controlling the
speed of the traveling block on a well drilling apparatus in order to prevent
the block from crashing into the crown block. (Richardson, col. 3, ll. 13-19;
col. 3, l. 67 – col. 4, l. 23.)
2. Richardson discloses a table with examples of various velocity
values and locations within the field of travel for an empty block and a
loaded block. (Richardson, col. 8, l. 63 – col. 9, l. 22.) Richardson
elaborates on Example 1 of the table as follows:
Appeal 2008-6279
Application 10/720,594

4
Referring to Example 1 of Table I, an empty traveling
block is being raised at the rate of 7.5 feet per second.
These parameters are determined by computing changes in
elevation detected by transmitter/receiver device 26. When
transmitter/receiver 26 determines that traveling block 27 is
within 20 feet of crown block 6, the computer 28 will take
action if the drill rig operator does not manually take such
action in order to stop traveling block 27 within a safe distance
of, for example, about one foot from crown block 6. The
change in elevation or speed is monitored 9 times/per second.
At 19 feet from crown block 6, traveling block 27 must have
been reduced to a speed of 7.1 ft/sec, at 18 feet to a speed of 6.7
ft/sec, and so forth until the speed of traveling block 27 has
been reduced to about 0.3 ft/sec at 2 feet and stopped within
about 1 foot from crown block 6. If the speed of travel being
monitored exceeds these preselected parameters computer 28
will cause the main brake to be applied and the throttle and
clutch released.
(Richardson, col. 8, ll. 24-44.) Richardson also discloses a second example
in which a loaded block is raised with a velocity of three feet per second.
(Id., col. 8, ll. 44-46.) In this second example, the computer must act to stop
the block within one foot of the crown block. (Id., col. 8, ll. 46-48.)
Richardson explains that the actions necessary to stop a heavily loaded block
are different than those with empty block. (Id., col. 8, ll. 52-58.)
3. Richardson also states:
Furthermore, although in the examples of Table I the
traveling block load is merely indicated as empty or loaded, the
exact load as measured by dead line weight indicator 32 in
combination with transducer 33 may be utilized to more
precisely compute the amount of distance required to slow
down the traveling block and therefore the velocity of the
traveling block at each distance from the crown block or
working floor at which overriding action must be taken.
(Richardson, col. 9, ll. 27-35.)
Appeal 2008-6279
Application 10/720,594

5
4. Therefore, Richardson teaches that the weight of the traveling
block is measured by weight sensing device (dead line weight indicator 32)
and that the maximum velocity value (the velocity at which overriding
action must be taken) is determined as a function of the measured weight on
the traveling block.
5. Ruddy discloses a system for accurately measuring the load on
a crane hoist during operation. (Ruddy, col. 2, ll. 34-41.)
6. Ruddy, in describing a shortcoming of a previously known load
measuring method, states: “due to accelerating forces, the signal generated
from the load cell is typically inaccurate during changes in speed of the
hoist.” (Ruddy, col. 1, ll. 57-65.) Ruddy’s invention addresses this
problem. (See id., col. 2, ll. 33-41.) “[T]he adaptation process of the
invention [of Ruddy] utilizes a transfer function [which includes an inertial
component affected by speed changes] between hoist torque and speed to
provide an accurate measurement of the weight of the load in real time.”
(Id., col. 3, ll. 6-9, 19-23.)
7. Appellant concedes that “Ruddy discloses determining the load
on a crane hoist and determining a maximum operating speed[.]” (App. Br.
7-8; see also id. 7 (“Ruddy discloses a method for measuring a load … and
then determining a maximum speed ….”).) Ruddy teaches that “the crane
hoist system of the [Ruddy] invention adjusts the maximum speed of lifting
or lowering the load according to the measured weight of the load, in such a
manner so as not to exceed the limitations of the crane hoist system.”
(Ruddy, col. 3, ll. 15-18; see also id., col. 1, ll. 49-51 (“the load must be
measured dynamically in order to compute the maximum safe speed”); col.
13, ll. 46-49 (“[T]he crane hoist system 100 of the invention actually adjusts
Appeal 2008-6279
Application 10/720,594

6
the maximum speed according to the weight of the load to respect the power
limitation.”).)
8. Therefore, Ruddy discloses measuring the load with a weight
sensing device and determining the maximum velocity of the load as a
function of the measured weight of the load.
9. The prior art of record indicates that the person of ordinary skill
in the art of controls for lifting devices (such as workover rigs and crane
hoists) has a high level of skill. (See, e.g., Richardson, Fig. 2; Ruddy, col. 3,
ll. 6-18, Figs. 1, 2.) The ordinary artisan would understand and be able to
apply the fundamental laws of physics involved in safely stopping a load
block. (See, e.g., Richardson, col. 8, ll. 52-58.)

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“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) (quoting 35 U.S.C. § 103). 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
Appeal 2008-6279
Application 10/720,594

7
in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966); see
also KSR Int’l Co., 550 U.S. 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.”). The scope and content
of the prior art includes the explicit and inherent teachings of the prior art.
In re Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001) (citing In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Court pointed out that “the principles laid down in Graham
reaffirmed the ‘functional approach’ of Hotchkiss [v. Greenwood], 11 How.
248 [(1851)].” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739 (citing
Graham, 383 U.S. at 12). The Court reiterated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at ___, 127 S. Ct. at
1739. The Court also noted that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. at ___, 127 S. Ct. at 1740 (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
Appeal 2008-6279
Application 10/720,594

8
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at ___, 127 S. Ct. at 1740. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at ___,
127 S. Ct. at 1740.
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, … would be led in a direction divergent from the path
that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)).

ANALYSIS
Appellant argues the rejected claims as a group. (App. Br. 10, 11.)
We select claim 4 as the representative claim, and claims 5, 6, 8, and 10-16
stand or fall with claim 4. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 4 recites “comparing the speed of the traveling block to a
maximum velocity value, wherein the maximum velocity value is
Appeal 2008-6279
Application 10/720,594

9
determined as a function of the measured weight on the traveling block” and
“wherein the weight of the traveling block is measured by a weight sensing
device[.]” Appellant contends that the cited references fail to disclose this
comparison step. (App. Br. 7-8.) Appellant first suggests that Richardson
discloses only the use of predetermined parameters, rather than values
measured or calculated during operation. (Id. 7 (citing Richardson, col. 7, ll.
53-57).) Appellant relies on Richardson’s disclosure of an embodiment in
which preselected limits of speed and other parameters may be placed in
unalterable, read-only memory so that the operator cannot exceed safe limits
by changing the parameters (Richardson, col. 7, ll. 51-60). However,
Richardson also discloses measuring the exact weight of the traveling block
load during operation, and using that measurement to determine the
maximum velocity value. (Facts 3, 4.) Similarly, the Ruddy reference
discloses measuring the weight of the traveling load with a weight sensing
device, and determining the maximum velocity value as a function of that
weight. (Facts 5-7.)
Richardson teaches the comparison of the monitored velocity against
the preselected maximum velocity. (See Fact 2 (quoting Richardson’s
statement that the computer will slow the load “[i]f the speed of travel being
monitored exceeds these preselected parameters[.]”).) Again, Richardson
also teaches that the maximum velocity may be determined as a function of
the measured weight of the traveling block, rather than using a preselected
value. (Facts 3, 4.) Thus, one of ordinary skill would understand
Richardson to teach comparing the block speed with the calculated
maximum velocity. Appellant’s assertion that Ruddy does not teach the
comparing step (App. Br. 7-8) is misplaced, as the rejection is based on the
Appeal 2008-6279
Application 10/720,594

10
combination of the references’ teachings, and Richardson teaches the
comparison step.
Appellant contends that “Ruddy clearly teaches away from the use of
weight sensors for dynamic determination of the block weight,” and,
therefore, a person of ordinary skill would have no reasonable expectation of
success in combining the cited references to arrive at the claimed invention.
(App. Br. 8.) Appellant asserts that “Ruddy states that the signal generated
from the load cell in a dynamic environment is typically inaccurate.” (Id.)
Appellant is referring to Ruddy’s discussion of the shortcomings of a prior
art method (see Fact 6). Ruddy discloses an improved system of accurately
measuring the weight of the load. (Id.) We do not find that Ruddy teaches
away from the use of a weight sensor to measure the weight of the traveling
block.
Appellant also argues that the combination of the cited references fails
to teach that the length of the upper slow down zone is proportional to the
momentum of the traveling block. (App. Br. 8.) Appellant appears to assert
that he has challenged the Examiner’s reliance on Official Notice of the fact
that this proportional relationship was well known in the art. (App. Br. 9-
10.) However, the Examiner relies on Richardson, not Official Notice, for
the teaching of a slow down zone length proportional to block momentum.
(See Final Rej. 2, 5-6.)
Appellant’s claim 4 recites that the upper slow down zone is
proportional to the block momentum, but does not require a specific
proportionality factor. The momentum of the block, according to the
Appellant, is the product of the weight on the block and the velocity of the
block. (Spec. 9, l. 30 – 10, l. 1; but see id., Fig. 8 (stating the correct
Appeal 2008-6279
Application 10/720,594

11
equation, “Momentum = M[ass] x V[elocity]”).) Richardson discloses an
example in which a block with an unspecified “empty” weight and being
raised at a velocity of 7.5 ft/s has a slow down zone beginning at twenty feet
from the crown block. (Fact 2.) Twenty feet is proportional to the block
momentum (weight x 7.5 ft/s), notwithstanding that Richardson does not
disclose the specific proportionality factor. Thus, Richardson discloses a
slow down zone length that is proportional to the momentum of the traveling
block.
Appellant again contends that Richardson’s disclosed parameters are
unalterably pre-set and, therefore, the slow down zone length cannot be
proportional to the actual, calculated momentum of the traveling block.
(App. Br. 9.) Even assuming that the claimed invention excludes pre-set
parameters, Appellant’s argument is unconvincing as Richardson does
disclose measuring the block velocity during operation and teaches utilizing
the exact load weight (measured during operation) to calculate the slow
down zone length and maximum velocity. (Facts 2, 3.)
Appellant reiterates the “unalterably pre-set” argument by
characterizing Richardson as disclosing using the exact load weight to
accurately determine the velocity of the block, and stating that “in the very
next sentence [of Richardson], this value is still compared against the
pre-selected maximum velocity value[.]” (App. Br. 11 (emphasis in
original).) Appellant is apparently erroneously referring to Richardson’s
indication that the exact load is compared to “a predetermined maximum
load” (not the maximum velocity) so as to avoid overloading the crane
(Richardson, col. 9, ll. 35-40).
Appeal 2008-6279
Application 10/720,594

12
Appellant also argues that there is no suggestion or motivation to
combine the references. (App. Br. 10, 11.) This argument is foreclosed by
KSR, in which the Court rejected the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness. KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1741. The Court
noted that an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at ___, 127 S. Ct. at 1741.
Richardson discloses a system for controlling the speed of a traveling
block in which various parameters are measured or calculated during
operation, speed comparisons are made, and the speed is adjusted so as to
keep it below the maximum velocity. (Facts 1-4.) Ruddy teaches measuring
the load weight on a crane with a weight sensing device and discloses that
the maximum load velocity is determined as a function of the weight. (Facts
5-8.) One of ordinary skill in the art would understand and be able to apply
the fundamental laws of physics involved in safely stopping a load block.
(Fact 9.) Therefore, the subject matter of Appellant’s claim 4 is merely the
combination of prior art elements according to known methods to yield
predictable results. See KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739.
Appellant has not persuaded us of error in the Examiner’s conclusion of
obviousness of claim 4, and claims 5, 6, 8, and 10-16, which fall with
claim 4.

Appeal 2008-6279
Application 10/720,594

13
CONCLUSION
We conclude that the Appellant has failed to show that the Examiner
erred in rejecting claims 4-6, 8, and 10-16 under 35 U.S.C. § 103(a) as being
unpatentable over Richardson and Ruddy.

DECISION
The decision of the Examiner to reject claims 4-6, 8, and 10-16 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(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

vsh

KING & SPALDING, LLP
JILL A. MCWHIRTER
1100 LOUISIANA, SUITE 4000
HOUSTON, TX 77002-5213