Ex Parte Beck et al

Patent Trial and Appeal Board

Sep 19, 2014

10655778 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS L. BECK, ROBB G. ANDERSON, and
STEVEN J. OLSON
____________________

Appeal 2012-006721
Application 10/655,778
Technology Center 3700
____________________

Before SALLY G. LANE, JOHN G. NEW, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 file this appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 17–19, 21, 23, 24, 26, and 69–73.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is identified as Unico, Inc. App. Br. 3.
2 Claims 20, 25, and 74 were allowed, and claims 1–16, 22, 27–68, and 75–
91 were canceled. See App. Br. 3.
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Claimed Subject Matter
The claims are directed to a control system for progressing cavity
pumps. Claim 17, reproduced below, is illustrative of the claimed subject
matter:
17. A method of controlling a progressing cavity pump for
transferring fluid within a fluid system, wherein the progressing
cavity pump is coupled to an electric motor, the method
comprising the steps of:
determining in real-time values of torque and speed
inputs to the progressing cavity pump without downhole
sensors by measuring electrical voltages applied to the motor
and currents drawn by the motor, and using the measured
values of electrical voltages applied to the motor and currents
drawn by the motor to calculate the values of torque and speed
inputs to the progressing cavity pump;
using the real-time values of torque and speed inputs to
calculate one or more values representing the performance of
the progressing cavity pump;
using the progressing cavity pump performance values to
produce one or more command signals; and
using the command signals to control in real-time closed-
loop basis the speed of the progressing cavity pump.

Rejections
The Examiner maintains the following rejections of claims 17–19, 21,
23, 24, 26, and 69–73 in the Answer:
(1) Claims 17–19, 21, 23, 24, 26, and 69–72 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Norris (US 5,996,691, issued Dec.
7, 1999) and Odachi (US 6,869,272 B2, issued Mar. 22, 2005);
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(2) Claim 73 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris, Odachi, and Kawabata (US 6,244,831 B1, issued
June 12, 2001).3

ANALYSIS
Rejection of claim 17 and its dependents based on Norris and Odachi
Appellants argue that the Examiner’s rejection of claim 17
is legally and factually deficient, and should be
overturned for no less than four independently sufficient
reasons. 1. The Examiner has not made a finding of the level of
ordinary skill in the art. 2. The Examiner has not engaged in
the type of analysis required to make a prima facie case of
obviousness. 3. The Norris et al. reference teaches away from
combination with the Odachi et al. reference and from the
solution of the present invention as claimed. And, 4. The
combination of the Norris et al. reference and the Odachi et al.
reference does not teach or suggest each and every element of
the present Claim 17.
App. Br. 9. We will address each argument in turn.

1) Level of Ordinary Skill in the Art
Appellants argue that the Examiner fails to make findings as to the
level of ordinary skill in the art and that the rejection should be reversed on
that basis. App. Br. 10–11. Appellants do not present any argument or
evidence as to the appropriate level of ordinary skill or how the Examiner’s
rejection may have been affected by the alleged lack of findings on this
issue. See id. We are therefore not persuaded by Appellants’ arguments.

3 The Examiner’s Answer states that claim 73 is rejected as unpatentable
over Norris and Odachi (Ans. 4), but the only substantive rejection provided
includes the Kawabata reference (see Ans. 9–10).
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In addition, “[a] specific finding on the level of skill in the art is not
. . . required where the prior art itself reflects an appropriate level and a need
for testimony is not shown.” Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 164–65 (Fed. Cir. 1985). The Board has previously re-
affirmed that “[t]he skill-level determination is an important guarantee of
objectivity in an obviousness analysis.” Ex parte Jud, 85 U.S.P.Q.2d 1280,
1282 (BPAI 2007) (informative) (denying relief requested on rehearing),
available at http://www.uspto.gov/ip/boards/bpai/decisions/inform/
rh061061.pdf. “Neither the statute nor the [Graham v. John Deere Co., 383
U.S. 1 (1966) (“Graham”)] factors, however, prescribe a specific format for
the skill-level determination.” Id. “While the examiner did not have an
expressly denominated finding regarding the level of skill in the art,
[Appellants are] on notice about what the examiner thought one of skill in
the art would have known and why.” Id. at 1284. “By outlining what one
would know from references, the examiner met [his] burden to establish the
skill level in the way it is typically met during examination.” Id. Appellants
“fail[] to argue or provide a persuasive basis for a different finding.” Id.
Appellants also fail to respond to the Examiner’s more specific findings in
the Answer. See Ans. 12 (“In the present case, the person having ordinary
skill in the art would have made the connection between the teachings of
Odachi relating to measuring torque and speed and the teachings of Norris
computing motor load, as the relationship between torque, speed and load is
within the knowledge of a person having ordinary skill in the art.”).
Accordingly, we decline to disturb the Examiner’s findings or conclusions
on this basis.

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2) The Examiner’s Reasoning
Appellants argue that the Examiner’s explanation of the motivation
for combining elements of Norris and Odachi to arrive at a device that
adjusts motor parameters is insufficient, and also that “such reasoning would
not support a combination of references that renders the present Claim 17
unpatentable, as Claim 17 provides more than a method of adjusting motor
parameters to keep a fluid transfer device operating efficiently.” App. Br.
12. Appellants argue that the reasoning does not explain why one of
ordinary skill in the art would adopt some portions of Odachi and not others,
and that the proposed modification is not logical and would change the
operation of Norris. Id. at 1213.
The Examiner’s reasoning is clarified significantly in the Examiner’s
Answer:
Note that Norris teaches the use of a complex computation
including the weight of the pump and the torque rating of the
motor driving the pump (the torque rating being the maximum
torque the motor can operate at) coupled with a real-time
measurement of the downward force on the pump to determine
the real-time load on the pump. Odachi’s teaching that
measurements of voltage and current drawn by the motor may
be used to derive [] the torque and speed of the motor (and by
extension, as one of ordinary skill in the art would be aware, the
load on the motor) may be used to simplify the calculations
required in Norris. One of ordinary skill in the art presented
with these two references would recognize the usefulness of
adapting the parameters of Odachi in the real-time control of
Norris even though Odachi does not teach real-time control of
the motor based on these parameters. By contending otherwise,
[Applicants] appear[] to be arguing against the references
individually, as only Odachi alone fails to teach in real-time
control. However, one cannot show nonobviousness by
attacking references individually where the rejections are based
on combinations of references.
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Ans. 13. We find this reasoning to be a sufficient articulation of the rational
underpinning for combining Norris and Odachi in the way the Examiner
explained that one of ordinary skill in the art would have combined them.
Appellants’ primary response to the Examiner’s reasoning in the
Answer is that it does not make sense that one of ordinary skill in the art
“would recognize the usefulness of adapting the parameter of Odachi in the
real-time control of Norris” because “Odachi does not teach real-time
control of the motor.” Reply Br. 2–3 (quoting Ans. 13). Under Appellants’
reasoning, two references could never be combined in an obviousness
analysis because one of them will always fail to teach some element of the
invention. The point made by the Examiner is that Norris teaches real-time
control of the pump, and Odachi teaches simplification of the measurements
needed for the real-time control taught in Norris by eliminating the need for
a separate load sensor. In other words, to the extent Appellants’ advance
over Norris consisted in elimination of the load sensor and reliance instead
on the relationship of the motor’s speed and torque to its voltage and current,
Odachi already suggested such a modification by performing similar
calculations without the need for a separate load sensor.
Appellants argue that the Examiner’s reasoning does not explain why
one of ordinary skill in the art would not also incorporate Odachi’s teaching
that its motor is run at a constant torque and then constant speed. App. Br.
12–13. We disagree. The Examiner’s reasoning starts from the primary
reference Norris and explains why one of ordinary skill in the art would
make the narrow modification of eliminating the need for the load sensor of
Norris and rely on other measurements (as taught in Odachi) to achieve the
same results. See Ans. 13. There is no similar motivation for adopting
Odachi’s particular mode of operation for a refrigerant compressor, the
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purpose of which is fully explained in Odachi. See Odachi col. 2, ll. 3–26.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellants also argue that “the suggested modification of Norris et al.
to include the system of Odachi et al. is not logical since Norris et al. already
controls the motor current and voltage with the signal from the load cell 38.”
App. Br. 13. The Examiner found, however, that one of ordinary skill in the
art would recognize that the teachings of Odachi may readily be used to
simplify measurement in Norris. See Ans. 12–13. Choosing from among
known methods of measurement of pump system parameters a method that
requires fewer parts or simpler calculations is not illogical.
Appellants also state that “if a proposed modification would render
the prior art invention being modified unsatisfactory for its intended
purpose, then there is no suggestion or motivation to make the proposed
modification” and that “if the proposed modification or combination of the
prior art would change the [principle] of operation of the prior art invention
being modified, then the teaching of the references are not sufficient to
render the claims prima facie obvious.” Appeal Br. 13. Appellants appear
to suggest that modification of Norris to rely on current and voltage
measurements as in Odachi makes Norris unsatisfactory for its intended
purpose and changes the principle of operation of Norris.4
Modification of a prior art reference will, by definition, result in some
changes. Norris’ intended purpose of efficiently controlling a pump,

4 Appellants later state that “Odachi et al.’s constant torque and constant
speed would make Norris et al. inoperative for its intended purpose and
therefore the combination is not obvious.” App. Br. 15. The Examiner does
not propose that one of ordinary skill in the art would have modified Norris
in that way.
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however, would only be hindered to the same extent that Appellants’
intended purpose would be hindered in using substitute measurements to
estimate pumping performance. Norris’ basic principle of measuring
operating conditions in real time to make adjustments is also not changed.
Appellants have not shown how potential elimination of a purpose for the
load sensor in Norris, or a change in the calculations made based on
measuring different parameters, would render the prior art inoperable or
change the basic principle of operation.
Accordingly, we are not persuaded that the Examiner erred in the
articulated reasoning used to support the conclusion of obviousness.

3) Teaching Away
Appellants argue that Norris teaches away from the combination with
Odachi “by disclosing that pump performance parameters are determined
directly only through use of load sensors 38.” App. Br. 14. “[M]ere
disclosure of alternative designs does not teach away.” In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Even where the prior art describes an
alternative as “inferior,” it may not teach away. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (“A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.”). Here, Appellants do not
point to any disclosure in Norris that would “criticize, discredit, or otherwise
discourage the solution claimed.” In re Fulton, 391 F.3d at 1201. A
reference that does not suggest that a proposed modification was unlikely to
work does not teach away from that modification. See Baxter Int’l, Inc. v.
McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (“Baxter apparently
misapprehends what it means to ‘teach away’ from a patented invention.
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‘[I]n general, a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.’” (quoting In re Gurley,
27 F.3d at 553)).
Appellants also suggest that Norris teaches away from the
combination or that the combination is otherwise unobvious because the
need for the sensor in Norris is eliminated but its function is retained, citing
MPEP § 2144.04 II.B in support. See App. Br. 15; Reply Br. 4. MPEP
§ 2144.04 provides that “omission of an element and retention of its function
is an indicia of unobviousness” and cites In re Edge, 359 F.2d 896 (CCPA
1966). Edge states that “[w]hile it may often be true that the mere omission
of an element together with its function does not produce a patentable
invention, it may also be unobvious to omit an element while retaining its
function.” Edge, 359 F.2d at 899. Here, the need for the load sensor in
Norris may be eliminated, but that is because Odachi teaches measurement
of other parameters. Thus, modification in view of Odachi is a substitution,
not an omission, even though the current and voltage that Odachi teaches to
measure are present in Norris. We, therefore, do not agree that MPEP
§ 2144.04 applies here.
Review of the facts in Edge confirms that it is inapplicable here. Edge
involved a claim to a “business bonus card” that had “a thin layer of metal”
bonded directly to a face of the card and obscured indicia of the bonus.
Edge, 359 F.2d at 897. One claim specifically recited that the thin layer of
metal was “capable of being erased to enable the denomination of said
indicia to be ascertained.” Id. The Washington Post prior art taught a
similar sales promotional card, “the sole significant difference being that the
indicia-obscuring means is a rectangular panel of relatively heavy, high
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tensile strength, opaque leatherette paper which is attached to the card by
zigzag stitching in such manner as allegedly to prevent unnoticed removal
and replacement.” Id. at 898. Another prior art reference, Neville, taught an
erasable ink/metal film on a card, but also included an “intermediate
transparent protective layer, thereby preventing destruction of the printed
indicia during erasure of the obscuring cover.” Id.
In Edge, the Board of Patent Appeals agreed with the Examiner that it
would have been obvious “[t]o substitute for the covering material of the
Washington Post Disclosure (sewed on leatherette), a metallic coating which
may be removed by erasing,” and that to omit the transparent layer of
Neville and its function would involve no more than a matter of choice. Id.
“Being unable to find in the art any suggestion of a thin layer of metal
bonded directly to paper-like card, obscuring a printed indicia thereon, yet
‘capable of being erased to enable the denomination of said indicia to be
ascertained,’” the CCPA reversed as to that claim. Id. at 899. The court
sustained the obviousness rejections of other claims that did not recite that
the thin metal layer was capable of being erased. See id.
The reasoning of Edge is inapplicable here where the measurement of
one set of parameters is substituted for measurement of a different set, and
the prior art itself teaches that the desired functions can be accomplished
without the separate sensor as in Norris. Odachi teaches that the torque is
substantially proportional to the current supplied to the motor and that
voltage and current can be used to estimate and control speed and torque.
Odachi Fig. 4; col. 4, ll. 21–22; col. 5, ll. 52–65; col. 6, ll. 1–14.
Incorporating these teachings into Norris, which Appellants do not argue
would have been beyond the ability of the ordinarily skilled artisan, would
eliminate the need for the dedicated sensor in Norris, even if the sensor were
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retained (for verification, backup, or other purposes). We note that claim 17
does not preclude an above-ground load sensor as in Norris (col. 4, l. 54),
and only excludes “downhole sensors.” Moreover, Odachi explicitly teaches
that in “the present embodiment, the motor 1 is controlled by the sensorless
method.” Col. 4, ll. 31–32. Accordingly, the modification of Norris in
accordance with Odachi is distinguished from the proposed modification in
Edge, where the transparent layer was precluded by the claims and there was
no suggestion in the prior art that elimination of the transparent layer was
technically feasible with a metal/ink layer rather than a leatherette covering.
For the foregoing reasons, Norris does not teach away from the
proposed modification.

4) Missing Elements
Appellants argue that the proposed combination does not teach or
suggest several elements of claim 17.
Appellants state that “[t]he Odachi et al. reference does not disclose,
teach, or suggest using real-time values of torque and speed inputs to
calculate one or more values representing the performance of the
progressing cavity pump,” and that instead it “specifically teaches driving
the motor at a constant predetermined torque for a set distance, and then,
regardless of when this distance is reached, driving the motor at a constant
speed.” Appeal Br. 17. As we have already discussed, the Examiner does
not maintain that Odachi teaches real-time control in the way that Norris
does. We agree with the Examiner that Appellants “appear[] to be arguing
against the references individually.” Ans. 13. Once the relevant teachings
of Odachi regarding measurement and control of current, voltage, speed, and
torque are incorporated into the Norris device, “real-time values of torque
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and speed inputs” are used “to calculate one or more values representing the
performance of the progressing cavity pump,” namely fluid level and pump
load. See Norris col. 4, ll. 37–47.
Appellants make similar arguments with respect to the claim elements
reciting “using the progressing cavity pump performance values to produce
one or more command signals” and “using the command signals to control
in real-time closed-loop basis the speed of the progressing cavity pump.”
App. Br. 17–18. Again, Appellants focus on the Odachi reference and not
the combination as proposed by the Examiner. Appellants’ statement that
“[t]he combination of Norris et al. and Odachi et al. as asserted by the
Examiner would not result in what is described and claimed in the present
application as the Odachi et al. and Norris et al. references also do not teach
these elements, as recognized by the Examiner” (App. Br. 18), does not
convince us otherwise.
As explained by the Examiner, “Norris teaches a progressing cavity
pump substantially similar to that of the claimed invention that uses real-
time parameters to control the load on the downhole pump.” Ans. 13. In
particular, Norris teaches “a control mechanism 44 that measures the
dynamic downward pull on the pump caused by pump operation and
generates an electrical control signal that controls the motor speed to limit
the rate of pump operation to produce a preselected optimum range of pump
down rate and casing liquid depth.” Norris col. 4, ll. 31–36. “If . . . the
pump load or rotation rate changes unexpectedly or dramatically, this can
indicate that the pump has run dry or the pump is sucking gas. In such a
case the controller may automatically slow the pump to alleviate the
condition.” Id. at col. 7, ll. 7–11.
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The difference between Norris and claim 17 lies in how the
performance values are calculated. In Norris, a sensor senses the downward
pull on the pump. See id. at col. 4, ll. 31–33. Norris further teaches:
After other factors are taken into account, such as pump
dimension, pump efficiency, and pump torque and the weight of
the pump and pump rod are subtracted from the overall
downward force on the pump rod as measured by sensor 38, the
sensor produces an output signal representative of the pumping
load on the pump, and this in turn is representative of the liquid
level in the outer casing.
Id. at col. 4, ll. 41–47. Odachi teaches a pump control method that measures
current and voltage of the motor and is able to drive the motor with a
specified torque or speed based on the relationships between current,
voltage, torque, and speed. See Odachi col. 4, ll. 10–29; col. 5, ll. 52–65;
col. 6, ll. 1–14. Appellants do not challenge the Examiner’s finding that “the
person having ordinary skill in the art would have made the connection
between the teachings of Odachi relating to measuring torque and speed and
the teachings of Norris computing motor load, as the relationship between
torque, speed and load is within the knowledge of a person having ordinary
skill in the art” (Ans. 12).
Accordingly, we agree with the Examiner that the combination of
Norris and Odachi teaches all elements of claim 17.

5) Conclusion as to Claim 17 and its Dependents
For the foregoing reasons, we affirm the Examiner’s rejection of
claim 17 under 35 U.S.C. § 103(a) as unpatentable over Norris and Odachi.
Dependent claims 18, 19, 21, 23, 24, and 26 are not argued separately (see
App. Br. 18) and fall with claim 17. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

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Rejection of claim 69 and its dependents based on Norris and Odachi
Claim 69 is an apparatus claim that uses “means for” language for
several elements, but is otherwise very similar to claim 17:
69. A pump control system for controlling a progressing
cavity pump for transferring fluid within a fluid system,
wherein the progressing cavity pump is coupled to an electric
motor, the pump control system comprising:
means for determining in real-time values of torque and
speed inputs to the progressing cavity pump, without downhole
sensors, by measuring electrical voltages applied to the motor
and currents drawn by the motor, and using the measured
values of electrical voltages applied to the motor and currents
drawn by the motor to calculate the values of torque and speed
inputs to the progressing cavity pump;
means for using the real-time values of torque and speed
inputs to calculate one or more values representing the
performance of the progressing cavity pump; and
means for using the progressing cavity pump
performance values to produce one or more command signals
for controlling in a real-time closed-loop basis the speed of the
progressing cavity pump.
Appellants’ brief includes a section designated as a “Separate
Argument for Claim 69.” App. Br. 19. The arguments for claim 69 overlap
those provided in support of claim 17 and do not appear to be specific to
claim 69’s status as an apparatus claim, recitation of “means for” elements,
or any other difference between the claims. We affirm the rejection of claim
69 for the same reasons given for claim 17. Dependent claims 70–73 are not
argued separately from claim 69 (see App. Br. 29) and fall with claim 69.
See 37 C.F.R. § 41.37(c)(1)(vii).

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DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence, we affirm the
Examiner’s decision to reject claims 17–19, 21, 23, 24, 26, and 69–73.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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