Ex Parte Tooley

Patent Trial and Appeal Board

Feb 21, 2013

11566659 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMIE TOOLEY
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Appeal 2010-011483
Application 11/566,659
Technology Center 3600
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Jamie Tooley (Appellant) seeks our review under 35 U.S.C § 134 of
the Examiner’s final decision rejecting claims 1-21. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b). Appellant’s claimed invention
relates to landfill gas control and monitoring systems and, more particularly,
to systems and methods for optimizing production of landfill gas. Spec.
[0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computerized method of optimizing landfill gas
extraction of a landfill gas extraction system positioned at a
landfill site, the landfill gas extraction system comprising a
plurality of wellheads positioned around the landfill configured
to extract landfill gas from the landfill, wherein each of the
wellheads comprises a flow valve configured to control an
amount of flow through the wellhead into the landfill gas
extraction system, the method comprising:
for each of a plurality of wellheads positioned around a
landfill, receiving data regarding current characteristics of the
wellheads and data indicating historical trends of the wellheads;
for each of the plurality of wellheads, determining a
respective adjustment to a flow valve of the respective
wellheads in order to optimize landfill gas extraction at the
respective wellhead, wherein the determining is based on at
least the current characteristics and the historical trends of the
respective wellhead;
after determining adjustments to respective flow valve
rates of each of the plurality of wellheads and prior to
implementing the determined adjustments on the respective

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb 11, 2010) and Reply Brief (“Reply Br.,” filed Jul. 26, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 27, 2010, corrected Jul.
28, 2010).
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wellheads, determining further adjustments to the flow valves
of at least some of the wellheads in order to optimize a total
landfill gas extraction of the landfill gas extraction system,
wherein the further adjustments are determined to adjust the
total landfill gas extraction towards a projected landfill gas
extraction of the landfill, wherein the further adjustments
indicate that flow to certain wellheads should be decreased
below levels indicated by the respective determined
adjustments for the certain wellheads and flow to other
wellheads should be further increased above levels indicated by
the respective determined adjustments for the other wellheads;
and
transmitting indications of at least some of the
determined adjustments and the further adjustments to a
technician, wherein the adjustments and the further adjustments
are physically implemented on the respective wellheads by the
technician according to the indicated determined adjustments
and further adjustments.
The Examiner relies upon the following evidence:
Hall US 4,890,672 Jan. 2, 1990
Brookshire US 2001/0005812 A1 Jun. 28, 2001
Claims 1-9 and 21 stand rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
Claims 1, 2, 10, and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hall.
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brookshire and Hall.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
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Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Non-statutory Subject Matter
Claims 1-9
Appellant argues claims 1-9 as a group (Reply Br. 7-9). We select
claim 1 as the representative claim for this group, and the remaining claims
2-9 each stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The preamble of claim 1 recites “[a] computerized method of
optimizing landfill gas extraction.” We are not persuaded by Appellant’s
argument that the claims require a “computerized method,” and therefore
“more than steps which can be performed mentally.” Rep. Br. 9.
Whether a preamble statement that the “patent claims a method of or
apparatus for…[x] is not merely a statement describing the invention's
intended field of use … [depends upon if] that statement is intimately
meshed with the ensuing language in the claim.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999). After
introduction of the term “computerized method” in the preamble, the claim
fails to reference the term again and does not fully incorporate the term into
the body of the claim so as to breathe life and breath into it. See Corning
Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.
Cir.1989).
Moreover, “[i]n order for the addition of a machine to impose a
meaningful limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than function solely
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as an obvious mechanism for permitting a solution to be achieved more
quickly, i.e., through the utilization of a computer for performing
calculations.” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333
(Fed. Cir. 2010). We find that the asserted “computerized method” fails to
play a significant part in permitting the steps of the claimed method to be
performed. The method steps in claim 1 consist essentially of mental steps
and the recitation of “transmitting indications” is mere insignificant extra-
solution activity rendering the claim to be directed to non-statutory subject
matter.
Claim 21
We disagree with Appellant’s assertion that the recitation of a
“computer system” in the preamble of claim 21, alone, is sufficient to satisfy
the test for statutory subject matter. See Reply Br. 9-11. For the same
reasons discussed above with respect to a “computerized method” recited in
claim 1, we find that the reference to a “computer system” in the preamble
of claim 21 is not a limitation to the claim.
Claim 21 further recites a system comprising a data collection module
“to receive data,” an adjustment recommendation module “to determine
adjustments,” and a notification module “to transmit adjustment data to a
computing device of a technician.” The Specification states that “module”
means “a software or hardware component.” Spec. [0030]. Accordingly,
the claim is drawn only to three software modules which can be drawn to
only a set of algorithms in this case and the rejection of record is sustained.

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Anticipation by Hall
Claims 1 and 2
We are persuaded by Appellant’s argument that Hall does not
expressly or inherently disclose “determining further adjustments to the flow
valves of at least some of the wellheads in order to optimize a total landfill
gas extraction of the landfill gas extraction system … wherein the further
adjustments indicate that flow to certain wellheads should be decreased
below levels indicated by the respective determined adjustments for the
certain wellheads.” Hall states that “adjustment valves are disposed to
decrease the flow of withdrawn gas wells on the basis of a temperature
increase indicated by the temperature meter of the relevant gas well.” Hall
Col. 3, ll. 32-36. While Hall discloses adjusting the flow of a well based on
information about that respective well, the Examiner has not shown that Hall
discloses determining adjustments to optimize a total landfill gas extraction
wherein those further adjustments require levels above or below the “levels
indicated by the respective determined adjustments for the certain
wellheads.” We therefore reverse the Examiner’s rejection of claim 1 as
being anticipated by Hall, as well as the respective associated dependent
claim 2.
Claims 10 and 11
We are not persuaded by Appellant’s argument that Hall fails to
disclose “receiving historical data” regarding wellheads and determining
adjustments of wellheads “based at least partly on one or more historical
trends associated with the respective flow valves.” App. Br. 15. Hall
expressly discloses that temperature data concerning wells “can be read at
regular intervals,” that the measured temperature values “can be transferred
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to a central location” and “can be recorded,” and that those values “can be
utilized for manual or automatic control of the flow of gas from the gas
well.” Hall Col. 3, ll. 7-17. We find no distinction between collecting,
recording, and utilizing data as disclosed by Hall and the claimed use of
“historical trends.”
We are further unpersuaded by Appellant’s argument that Hall fails to
teach or suggest the combination of features in claim 10 “for the same
reasons” Appellant raised with respect to claim 1 “where applicable.” App.
Br. 15. An examination of independent claim 10 shows it recites limitations
that are distinct from the limitations recited for independent claim 1. Unlike
claim 1, claim 10 does not state that further adjustments require levels above
or below the “levels indicated by the respective determined adjustments for
the certain wellheads.” We are not in a position to speculate as to what
arguments Appellant believes are applicable to both claims. Arguments
which Appellant could have made but chose not to make in the Briefs have
not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii) (2008). Accordingly, Appellant has not overcome the
Examiner’s determination that claim 10 is anticipated by Hall. Appellant
offers no additional argument on dependent claim 11, which we therefore
also find anticipated by Hall on the same grounds as discussed above.

Obviousness based on Brookshire and Hall

Claims 1-9
We are unpersuaded by Appellant’s argument that Brookshire “does
not appear to include any determining of adjustments prior to actually
making adjustments,” and “fails to teach or suggest determining such further
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adjustments to certain wellheads, after initial adjustments for each of the
wellheads have already been determined.” App. Br. 18-20. To the contrary,
we agree with the Examiner that Brookshire “discloses subroutines requiring
a host of predeterminations or further determinations required prior to
making adjustments to the manual isolation valves.” Ans. 8. For example,
Brookshire [0013] states that “the computer controls the control valve of
each cell to maintain oxygen concentration below a predetermined oxygen
concentration setpoint, while controlling the control valves such that the sum
of the gas flow rates through all cells is maintained within a predetermined
field flow rate.” Brookshire therefore effectively discloses determining gas
flow rates through cells based on a characteristic of the wellhead, then
determining further adjustments based on the field flow rate.
We also find unpersuasive Appellant’s argument that both Hall and
Brookshire “fail to teach or suggest transmission of indications of
adjustments and further adjustments.” App. Br. 19. The Appellant has not
addressed the combination of prior art references as a whole but simply
improperly argues the merits of Brookshire and Hall individually. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . .
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art”). As
found by the Examiner, Brookshire discloses transmission of adjustments
and further adjustments to an automatic valve control system and Hall
discloses the manual adjustment of valves. Appellant has not overcome the
Examiner’s determination that it would have been obvious to use a
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technician to manually adjust the valves as disclosed by Hall in the control
system disclosed by Brookshire.
Claims 10, 11, and 15-20
We are not persuaded by Appellant’s contention that neither
Brookshire nor Hall discloses “historical trends” or storage of historical
characteristics of wellheads. See App. Br. 20-21. As discussed above, we
find no distinction between collecting, recording, and utilizing data as
disclosed by Hall and the claimed use of “historical trends” or “data
regarding historical energy production.” Appellant offers no additional
argument on dependent claims 11 and 16-20, which we therefore also find
unpatentable over Brookshire and Hall on the same grounds as discussed
above.
Claims 12-14
We are not persuaded by Appellant’s argument that Hall and
Brookshire fail to teach or suggest “the use of historical data from wellheads
and the determination of suggested adjustments to flow rates.” See App. Br.
22. As discussed above, Appellant has not overcome the Examiner’s
determination that Hall discloses the use of historical data and that
Brookshire discloses subroutines requiring a host of predeterminations or
further determinations required prior to making adjustments to the manual
isolation valves.
Claim 21
We are not persuaded by Appellant’s argument that Hall and
Brookshire fail to teach or suggest “any data that includes ‘an indication of
an order of adjusting the plurality of wellheads.’” See App. Br. 22. We
agree with the Examiner that Brookshire discloses a computer system or
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collection module “wherein the control module determines cell adjustments
based on global flow rate which indicates priority to particular cell flow
rates most out of proportion with its weighted factor.” Ans. 6. For example,
Brookshire [0070] discloses adjusting control valves to cells that have “the
highest methane content” or “the lowest methane content” in optimizing the
operation of the system. Thus, Brookshire discloses an order of adjusting
wellheads based on data concerning a characteristic of the wellheads.
CONCLUSIONS OF LAW
We conclude that Appellant has not overcome the Examiner’s
rejection of claims 1-9 and 21 under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
We further conclude that Appellant has overcome the Examiner’s
rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as being anticipated by
Hall.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 10 and 11 under 35 U.S.C. § 102(b) as being anticipated
by Hall.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 1-21 under 35 U.S.C. § 103(a) as being unpatentable over
Brookshire and Hall.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-21.
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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) (2011).
AFFIRMED

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