Singal, Kalpesh et al.

Patent Trials and Appeals Board

May 4, 2020

14575819 - (D) (P.T.A.B. May. 4, 2020)

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.
14/575,819 12/18/2014 Kalpesh Singal 278496 6288
6147 7590 05/04/2020
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
1 RESEARCH CIRCLE
K1 - 3A59
Niskayuna, NY 12309
EXAMINER
KABIR, SAAD M
ART UNIT PAPER NUMBER
2119
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
GRCLegal.mail@ge.com
preisman@ge.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KALPESH SINGAL, FATEMEH ZAMANIAN, and
SHYAM SIVARAMAKRISHNAN
____________

Appeal 2019-000196
Application 14/575,819
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1, 3, 5–14, 17–22, and 25–29. Claims 2, 4, 15, 16, 23, and 24 are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
General Electric Company. See Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
An embodiment of Appellant’s invention relates to “methods and
system for enhancing flow of a fluid induced by a rod pumping unit.” Title.

Rejections 2
A. Claims 1, 3, 5, 6, 13, 14, 17, 18, 22, 25, and 26 are rejected under
35 U.S.C. § 103 as being obvious over the combined teachings and
suggestions of McKee (US 4,973,226; iss. Nov. 27, 1990), Doyle (US
2013/0306326 A1; pub. Nov. 21, 2013), and Mills (US 7,316,542 B2; iss.
Jan. 8, 2008). See Final Act. 4.
B. Claims 7, 19, and 27 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of McKee, Doyle,
Mills, and McTamaney et al. (US 4,509,901 A1; iss. April 9, 1985)
(“McTamaney”). See Final Act. 11.
C. Claims 8–10, 20, 21, 28, and 29 are rejected under 35 U.S.C. § 103
as being obvious over the combined teachings and suggestions of McKee,
Doyle, Mills, and Diederich (US 5,281,100; iss. Jan 25, 1994). See Final
Act. 12.
D. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of McKee, Doyle,
Mills, and Watson (WO 2015/077890 A1; pub. June 4, 2015). See Final
Act. 17.

2 The Examiner withdrew the rejection under 35 U.S.C. § 112(b) of claims
19 and 27. Ans. 3. Therefore, this rejection is not before us on appeal.
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Illustrative Claim 1
1. A system for enhancing a flow of a fluid induced by a
rod pumping unit, said system comprising:
one or more sensors configured to monitor one or more
conditions of the rod pumping unit and generate signals
representing sensor data based on the one or more conditions;
and
a pumping control unit comprising a processor and a
memory, said pumping control unit in communication with said
one or more sensors, said pumping control unit configured to
control stroke movement of the rod pumping unit, thereby
controlling the flow of the fluid induced by the rod pumping
unit, said pumping control unit configured to:
(a) initiate at least one stroke of the rod pumping unit,
wherein the at least one stroke is based on current stroke timing
data, wherein the current stroke timing data includes a value for
strokes per minute (SPM);
(b) receive signals representing sensor data from the one
or more sensors;
(c) upon a determination of, based on the sensor data, a
violation of a first set of constraints, make a first adjustment to
the current stroke timing, and return to step (a);
(d) upon a determination of, based on the sensor data, no
violation of the first set of constraints and a violation of a
second set of constraints, make a second adjustment to the
current stroke timing, and return to step (a);
(e) upon a determination of, based on the sensor data, no
violation of the first and second set of constraints and a
violation of a third set of constraints, make a third adjustment
to the current stroke timing, and return to step (a);
(f) upon a determination of based on the sensor data, no
violation of the first, second and third set of constraints, make a
fourth adjustment to the current stroke timing, and return to step
(a); and
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(g) upon a determination that the current stroke timing
exceeds total time available for a stroke, perform at least one of
reduce the value for SPM, and reverse one or more previously
made adjustments.
Claims App.; Appeal Br. 14–15 (Emphasis added regarding the disputed
dispositive step (e) limitation under 35 U.S.C. § 103).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight infra specific arguments and evidence we find to be
dispositive.

Rejection A of Independent Claims 1, 14, and 22 under § 103
Issue: Under 35 U.S.C. § 103, we focus our analysis on the following
argued step (e) limitation from claim 1 that we find is dispositive regarding
obviousness Rejection A of independent claims 1, 14 and 22.

We decide the question of whether the Examiner erred by finding that
the cited references collectively teach or suggest the disputed limitation (e)
of independent claim 1, as shown in emphasis below:

1. A system for enhancing a flow of a fluid induced by a rod
pumping unit, said system comprising: . . . [a] pumping
control unit configured to:
. . .
(e) upon a determination of, based on the sensor data, no
violation of the first and second set of constraints and a
violation of a third set of constraints, make a third adjustment
to the current stroke timing, and return to step (a);
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within the meaning of independent claim 1? 3 4
Appellant argues:
If the Final Action alleges that the third set of constraints is
whether or not a change in filling is detected and the third
adjustment is made in steps 188 and 190 of McKee, in no way
whatsoever is the determination of the third set of constraints in
McKee based on whether the first and second constraints are
violated or not, as recited in the claimed invention. Doyle and
Mills add nothing to overcome this shortcoming in McKee.
For at least this reason alone, claims l, 14, and 22, and
claims depending therefrom, are allowable over the applied art,
taken singly or in combination.
Appeal Br. 11–12 (emphasis added).

The Examiner responds and concludes:
[U]nder broadest reasonable interpretation the system only
needs to be able to make the determination on the first/second
constraints and then check a third set. . . . That is to say, the
claims do not require that the third determination is based on
the result of the first and second constraints, merely that upon
non-violation happening (and being determined to happen) a
third set of constraints is checked. In other words, the claims do
not require that the third set of constraints happen if and only if
the result of the first two constraints is non-violated – they only
require a system configured to check a third set of constraints
after it has determined that a first and second set were not
violated.
Ans. 3 (emphasis added).

3 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
4 We note limitation (e) of claim 1 is recited using identical language in
remaining independent claims 14 and 22.
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Claim Construction
We note claim 1 does not recite whether “the third set of constraints
happen,” as stated by the Examiner. Id. (emphasis added). Rather the
claimed test for each respective constraint set (first, second, and third) is
whether it is violated or not violated.
Nor do we conclude that step (e) (considered in isolation) requires any
particular sequence or temporal order regarding the sensor determination of
the binary states (violated or not violated) of the respective first, second, and
third sets of constraints. Thus, within the scope of step (e) of claim 1, we
conclude the sensor determination of the state of each of the three sets of
constraints could be checked in any order without affecting the result of
step (e). See infra, Table One.
However, in considering claim 1 as a whole, we find the Examiner’s
statement that the claims “only require a system configured to check a third
set of constraints after it has determined that a first and second set were not
violated” (Ans. 3) is fully consistent with the flow chart depicted in
Appellant’s Figure 5, and is in accord with the claimed sequence of steps (c)
and (d), in which step (e) appears to be reached only if the conditions of
steps (c) and (d) are not satisfied.5
However, we conclude the scope of the claim 1 is broader, because we
conclude the particular order or sequence of performing steps (c), (d), (e),
and (f) will not change the result, which is the selection of the appropriate
adjustment (1–4) to be performed. See infra, Table One.

5 We note if the condition precedent in any of steps (c), (d), (e), or (f) is
satisfied, then the appropriate adjustment (1, 2, 3, or 4) will be performed and
there will be a “return to step (a).” Claim 1.
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We note claim 1 is a system claim 1 that includes a repeated express
reference to a “return to step (a).” Thus, we conclude the “pumping control
unit” structure of system claim 1 is “configured to” perform steps a-g of a
method.6
However, a close inspection of claim 1 reveals that a repeating closed
control loop results in claim 1, in which performance of any of steps (c), (d),
(e), or (f) will in every case loop back to step (a): i.e., “and return to step
(a).” Therefore, it is unclear how step (g) is ever reached, because it is
completely outside of the control loop in which each of steps (c), (d), (e), or
(f) will always loop back to step (a).7
Thus, we conclude Appellant’s claim 1 will not result in the flowchart
depicted in Figure 5 of Appellant’s drawings, that shows decision element
518 (“Current Stroke Timing Valid?”) and element 520 (“Reverse Last
Adjustment Decrease SPM”) are reached after it is determined whether the
first, second, and third constraints are violated. Although we accord full

6 Cf. “[A]lthough a method claim necessarily recites the steps of the method
in a particular order, as a general rule the claim is not limited to performance
of the steps in the order recited, unless the claim explicitly or implicitly
requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512
F.3d 1338, 1345 (Fed. Cir. 2008).

7 In the event of further prosecution, including any pre-allowance review, we
leave it to the discretion of the Examiner to consider a rejection of at least
claim 1, under 35 U.S.C. § 112(b), as being of indefinite scope, because it is
unclear how step (g) is ever reached, for the reasons discussed above.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.

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patentable weight to step (g), it is unclear how it is ever reached, within the
language of claim 1.
Upon further inspection of Appellant’s claim 1, we conclude there is
only one scenario { 0, 0, 1 } in which condition step (e) is satisfied that
triggers the third adjustment to the current stroke timing, as shown in the
binary truth table below, which depicts all possible outcomes of triggering
claim 1 conditional steps (c), (d), (e), and (f), as a function of the particular
binary states (1=violated, 0=not violated) of the first, second, and third sets
of constraints:
TABLE ONE
1= constraint violated 0 = constraint not violated
Conditional
claim step
c, d, e, or f
triggered?
1st set of
constraints
violated?
2nd set of
constraints
violated?
3rd set of
constraints
violated?
Adjustment
steps 1–4
performed?
T = true
(f) = yes 0 0 0 4th Adj. = T
(e) = yes 0 0 1 3rd Adj. = T
(d) = yes 0 1 0 2nd Adj. = T
(d) = yes 0 1 1 2nd Adj. = T
(c) = yes 1 0 0 1st Adj. = T
(c) = yes 1 0 1 1st Adj. = T
(c) = yes 1 1 0 1st Adj. = T
(c) = yes 1 1 1 1st Adj. = T

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Even though the scope of claim 1 is broader than interpreted by the
Examiner (who reads a temporal sequence of checking the constraints into
step (e) of claim 1 – Ans. 3), given our analysis of claim 1 in TABLE ONE
above, and the Examiner’s response in the Answer (3), we nevertheless find
a preponderance of the evidence supports Appellant’s contention:

[I]n no way whatsoever is the determination of the third set of
constraints in McKee based on whether the first and second
constraints are violated or not, as recited in the claimed
invention. Doyle and Mills add nothing to overcome this
shortcoming in McKee.
Appeal Br. 11–12 (emphasis added).
We note the Examiner maps the first set of constraints recited in claim
1 to the maximum load condition of McKee’s pump system at column 6,
lines 27–39. See Final Act. 5. The Examiner maps the second set of
constraints recited in claim 1 to the minimum load condition of McKee’s
pump system at column 6, lines 40–51. See Final Act. 5-6. The Examiner
maps the third second set of constraints recited in claim 1 to the operating
speed of the motor in McKee’s pump system at column 3, lines 42-67. See
Final Act. 6.
Without more explanation from the Examiner, or evidence in support,
we agree with Appellant that the Examiner has not shown by a
preponderance of the evidence that “the determination of the third set of
constraints in McKee [is] based on whether the first and second constraints
are violated or not, as recited in the claimed invention. Doyle and Mills
add nothing to overcome this shortcoming in McKee.” Appeal Br. 11–12
(emphasis added).
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Because the Examiner has not fully developed the record to show how
McKee teaches the recited step (e) { 0, 0, 1 }8 condition precedent is met
(corresponding to the binary states of the first, second, and third sets of
constraints, respectively), we are constrained on this record to reverse the
Examiner’s rejection of independent claim 1.9 See supra, TABLE ONE.
We find a preponderance of the evidence supports Appellant’s
arguments for essentially the same reason articulated in the Appeal Brief
(11–12), and as further discussed above. We note remaining independent
claims 14 and 22 recite the contested step (e) of claim 1 using identical
language.
Accordingly, we are constrained on this record to reverse the
Examiner’s § 103 Rejection A of all independent claims 1, 14, and 22, and
also each dependent claim rejected under Rejection A.

Rejections B, C, and D, under 35 U.S.C. § 103
Because the Examiner has not shown that the additional cited
secondary references overcome the deficiency of the base combination of
McKee, Doyle, and Mills (as relied upon to reject the independent claims
under Rejection A), for the same reason, we also reverse the Examiner’s
Rejections B, C, and D of all remaining dependent claims.

8 0 = constraint not violated, 1= constraint violated.

9 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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CONCLUSION
The Examiner erred in rejecting claims 1, 3, 5–14, 17–22, and 25–29
as being obvious over the cited combinations of references under 35 U.S.C.
§ 103.
DECISION SUMMARY

REVERSED

Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 5, 6, 13,
14, 17, 18, 22,
25, 26
103 McKee, Doyle
Mills
1, 3, 5, 6, 13,
14, 17, 18,
22, 25, 26
7, 19, 27 103 McKee, Doyle,
Mills,
McTamaney
7, 19, 27
8–10, 20, 21,
28, 29
103 McKee, Doyle,
Mills, Diederich
8–10, 20, 21,
28, 29
11, 12 103 McKee, Doyle,
Mills, Watson
11, 12
Overall
Result
1, 3, 5–14,
17–22, 25–29