Saudi Arabian Oil Company

Patent Trials and Appeals Board

Mar 21, 2022

2021003762 (P.T.A.B. Mar. 21, 2022)

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. 16/113,047 08/27/2018 Amer A. Al-Dhafiri 2012738-0047 2533 148219 7590 03/21/2022 Choate / Saudi Arabian Oil Company (ASC and SAO) C/M Ref: 2012737 and 2012738 Two International Place Boston, MA 02110 EXAMINER SOLAK, TIMOTHY P ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 03/21/2022 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): jnease@choate.com patentdocket@choate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMER A. AL-DHAFIRI Appeal 2021-003762 Application 16/113,047 Technology Center 3700 Before PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and ANNETTE R. REIMERS, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. See Final Office Action, dated September 16, 2020 (“Final Act.”), at 1; and Appeal Brief filed March 15, 2021 (“Appeal Br.”), at 6. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party as Saudi Arabian Oil Company. Appeal Br. 4. Appeal 2021-003762 Application 16/113,047 2 Appellant does not argue for the patentability of some claims and we summarily affirm the rejection of those claims. For the remaining claims and rejections, we find Appellant’s arguments persuasive, and accordingly reverse the rejection of those claims. Accordingly, we AFFIRM IN PART. CLAIMED SUBJECT MATTER The claims on appeal relate to a pumping system configured to control functions such as stroke duration and injection volume. Appeal Br. 32-39 (Claims App.); Spec. 1:4-5. This appeal focuses on the relationship between the duration of the discharge stroke and the duration of the suction stroke. Claim 1 does not include that relationship, it is added by dependent claim 3. We reproduce claims 1 and 3 below. 1. A pumping system comprising: a head comprising an opening and an injection port, the head being configured for holding content to be forced through the injection port; a bladder within the head, the bladder between the content and the opening; and a plunger configured to move through the opening of the head and to apply force within the bladder, the plunger being movable in a discharge stroke to force the bladder against the content and thereby force the content through the injection port. Appeal Br. 32 (Claims App.) Appeal 2021-003762 Application 16/113,047 3 3. The pumping system of claim 1, further comprising: a driver to control the movement of the plunger, the driver for controlling the movement of the plunger so that the discharge stroke of the plunger proceeds for a first duration, a suction stroke of the plunger proceeds for a second duration, and the first duration exceeds the second duration, where the first duration is at least one order of magnitude greater than the second duration. Appeal Br. 33 (Claims App., emphasis added). In sum, claim 3 recites that the duration of the discharge stroke (first duration) “exceeds” the duration of the suction stroke (second duration), and then further recites that the duration of the discharge stroke is “at least one order of magnitude” greater than the duration of the suction stroke. REJECTIONS 1. The Examiner rejects claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Furey.2 Final Act. 6. 2. The Examiner rejects claim 2 under 35 U.S.C. § 103 as unpatentable over Furey and Oguma.3 Final Act. 6-7. 3. The Examiner rejects claims 3-5, 7, and 14-16 under 35 U.S.C. § 103 as unpatentable over Furey and Sivaramakrishnan.4 Final Act. 7-11. 4. The Examiner rejects claim 6 under 35 U.S.C. § 103 as unpatentable over Furey, Sivaramakrishnan, and Peeler.5 Final Act. 11-12. 2 Furey, US 2009/0068032 A1, Mar. 12, 2009. 3 Oguma, US 2010/0021326 A1, Jan. 28, 2010. 4 Sivaramakrishnan, US 2014/0161627 A1, June 12, 2014. 5 Peeler, US 6,575,331 B1, June 10, 2003. Appeal 2021-003762 Application 16/113,047 4 5. The Examiner rejects claims 8-12 under 35 U.S.C. § 103 as unpatentable over Furey and Jackson.6 Final. Act. 12-14. 6. The Examiner rejects claim 13 under 35 U.S.C. § 103 as unpatentable over Furey. Final Act. 15. 7. The Examiner rejects claim 17 under 35 U.S.C. § 103 as unpatentable over Furey, Sivaramakrishnan, and Fehr.7 Final Act. 15-16. 8. The Examiner rejects claim 18 under 35 U.S.C. § 103 as unpatentable over Furey, Sivaramakrishnan, Fehr, and Oguma. Final Act. 16. 9. The Examiner rejects claim 19 under 35 U.S.C. § 103 as unpatentable over Furey, Sivaramakrishnan, and Fehn.8 Final Act. 17-18. 10. The Examiner rejects claim 20 under 35 U.S.C. § 103 as unpatentable over Furey, Sivaramakrishnan, and Oguma. Final Act. 18-19. OPINION I. Rejections Not Argued We review the appealed rejections for error identified by Appellant, and those arguments not made are forfeited. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); 37 C.F.R. § 41.37(c)(1)(iv). Appellant did not present argument against the first, second, fifth, and sixth rejections (claims 1, 2, and 8-13). Consequently, we sustain the rejection of these claims. 6 Jackson, US 2008/0226468 A1, Sept. 18, 2008. 7 Fehr, US 2016/0153441 A1, June 2, 2016. 8 Fehn, US 5,388,965, Feb. 14, 1995. Appeal 2021-003762 Application 16/113,047 5 II. Remaining Rejections A. Introduction Rejections three, four, and seven through ten remain. Each of these rejections relies at least in part on the combination of Furey and Sivaramakrishnan. In that combination, the Examiner found that Furey discloses the subject matter of independent claim 3, except that Furey is silent regarding a driver to control movement of the plunger so that the discharge stroke duration exceeds the suction stroke duration by at least an order of magnitude. Final Act. 7-8. The Examiner found that Sivaramakrishnan discloses a pumping system having a driver (processor- based control device 16 and fluid pumping unit 14) that controls a plunger (plunger 48) so that the discharge stroke (push stroke) duration exceeds the suction stroke (pull stroke) duration by at least an order of magnitude (one second). Id. at 8 (citing Sivaramakrishnan ¶¶ 24, 41; Fig. 6) see also Advisory Action dated Dec. 9, 2020 (“Advisory Act.”), at 3 (finding that a 5.5 second duration is an order of magnitude greater than a 4.5 second duration). The Examiner found that Sivaramakrishnan discloses that the discharge duration exceeds the suction stroke duration to ensure equal piston displacement for the two strokes. Id. (citing Sivaramakrishnan ¶ 41). The Examiner concludes that it would have been obvious to modify Furey to include stroke duration as taught by Sivaramakrishnan to ensure equal piston displacement. Rather than address the claims by rejection, Appellant presents three arguments9 that apply to various claims and rejections. The three arguments 9 Referred to by Appellant as “Grounds.” See e.g., Appeal Br. 11. Appeal 2021-003762 Application 16/113,047 6 are: 1) the Examiner misinterpreted the claimed “order of magnitude” requirement; 2) Sivaramakrishnan is not properly combinable with Furey; and, 3) the Examiner has not established that the difference between the first and second durations is a result effective variable. Below, we address the three arguments in turn, including an explanation of how that argument applies to the various claims and rejections. B. Arguments 1. Order of magnitude a. Issue As explained above, claim 3 requires the duration of the discharge stroke (first duration) exceed the duration of the suction stroke (second duration) by at least one order of magnitude. As detailed above in the Introduction, the Examiner found that Sivaramakrishnan’s discharge stroke is at least one second greater than the suction stroke, and for that reason, is at least one magnitude greater as claimed. Final Act. 8; Advisory Action at 3. Appellant argues that Sivaramakrishnan’s discharge stroke is not at least one magnitude greater as claimed. See Appeal Br. 16-23. The issue before us is whether Sivaramakrishnan discloses or suggests a discharge stroke duration that is as least an order of magnitude greater than the suction stroke duration as required by claim 3. To make this determination, we construe the limitation at issue, and then assess the prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. The first step in both analyses is a proper construction of the Appeal 2021-003762 Application 16/113,047 7 claims . . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.”) (internal citations omitted). b. Analysis The Examiner contends that the single use of the phrase “order of magnitude” in the Specification is not limiting and does not define the term. Ans. 20 (referring to Spec. 5:9-13). We agree that the Specification does not provide a lexicographical definition of the phrase “order of magnitude”; however, the use of the phrase in the Specification is limiting in the sense that it guides our interpretation of the claim language. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.”). The Specification describes that the duration of the discharge stroke may be “orders of magnitude” greater than the suction stroke. Spec. 5:12- 13. The Specification provides two examples: one, a discharge stroke duration of “twenty or more minutes,” and a suction stroke duration of “one or more seconds, or one or more minutes”; and; two, a discharge stroke duration of “one or more hours” and a suction stroke duration of “one or more seconds or one or more minutes.” Id. at 5:13-18. In the first example, comparing the quantities provided, a discharge stroke of 20 minutes is a number of times (at least 20) greater in duration than a suction stroke duration of one second or one minute. In the second example, a discharge stroke of an hour is a number of times (at least 60) longer in duration than suction stroke of a second or a minute. Appeal 2021-003762 Application 16/113,047 8 The Examiner evaluates the Specification examples with a focus on the language “or more.” See Ans. 20. Under the Examiner’s interpretation of the first example, the duration of the suction stroke of “one or more seconds, or one or more minutes” may be 20 minutes because it can be “more minutes.” In that case, the discharge and suction strokes would be of equal duration. Based on this, the Examiner asserts that “an order of magnitude” is broad enough to cover when the discharge and suction strokes are equal. Id. A first problem with the Examiner’s interpretation is that even if the Specification includes examples where the discharge stroke duration does not exceed the suction stroke duration, that does not negate the examples of a discharge stroke duration that is a number of times greater than the suction stroke duration. Spec. 5:13-18. Another problem with the Examiner’s position is that it interprets “at least one order of magnitude greater” as simply “greater.” See Ans. 21 (interpreting an order of magnitude as only requiring a difference). See Appeal Br. 17-18; Reply Br. 4 (arguing the Examiner is incorrect to interpret an order of magnitude as simply “more”); Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). Further, the Examiner’s analysis does not address the example that does not include the language “or more.” See Spec. 9:3-6 (discharge stroke of about an hour and a suction stroke about one to three minutes). Appellant argues the ordinary meaning of “an order of magnitude” as claimed is “a class in a system of classification determined by size, each class being a number of times (usually ten) greater or smaller than the one before.” See Appeal Br. 16 (quoting the definition in the Oxford English Appeal 2021-003762 Application 16/113,047 9 Dictionary) (emphasis omitted). This definition is consistent with the Specification. See Spec. 5:12-13. Appellant contends that two prior art references (Gray and Berger10) use the term “order of magnitude” consistent with the ordinary meaning of a number of times (usually ten) greater or smaller than the item being compared. Appeal Br. 21-23 (citing and quoting relevant portions of each reference). The Examiner responds that Gray suggests that an order of magnitude can mean no difference in size.11 Ans. 22. The Examiner asserts that Berger uses the term “order of magnitude” to mean “anywhere between no difference and some difference in size.” Id. (citing Berger 12:13-16). For the reasons that follow, we disagree with the Examiner’s interpretation of both references. Gray discloses that a control chamber preferably has a volume on the same order of magnitude as the volume of the pump chamber. Gray, 24:60- 25:2. The disclosure that the control and pump chambers have similar volumes does not shed light on the meaning of the term “order of magnitude.” We discern nothing in Gray inconsistent with the interpretation that an order of magnitude means a number of times (usually ten) greater or smaller than the item being compared. Turning to Berger, the portion cited by the Examiner does not contain the term “order of magnitude” or any information related to that term. See Ans. 22 (citing Berger 12:13-16). Further, the Examiner does not address 10 Gray, US 6,877,713 B1, Apr. 12, 2005; Berger, US 8,215,922 B2, July 10, 2012. 11 The Examiner does not reference by column and line number, but based on content appears to be referring to Gray, 24:60-25:2. Appeal 2021-003762 Application 16/113,047 10 the portions of Berger relied on by Appellant. See Appeal Br. 22-23 (citing Berger, 3:46-50, 5:58-60, and 11:60-62). We do not discern, nor does the Examiner identify, any use of the term “order of magnitude” in Berger that is inconsistent with the ordinary meaning. Our claim interpretation is not that an order of magnitude requires a minimum of a ten-fold difference in size between the compared values. Rather, we more specifically determine that the difference in duration between 4.5 seconds and 5.5 seconds (Examiner’s finding at Final Act. 8; Advisory Act. 3) is not an order of magnitude difference because it is not a number of times greater. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (we need only construe the claims to the extent necessary to resolve the dispute). Consequently, we do not sustain the rejection of claim 3 as obvious over Furey and Sivaramakrishnan. This analysis is equally applicable to claim 4 because it depends from claim 3. 2. Combinability Appellant argues that the rejection of claims 3-7 and 14-20 is in error.12 Appeal Br. 23-25. Appellant characterizes Sivaramakrishnan as a system having smooth flow provided by three pumps, each phased by 120 degrees, so that one cylinder is always discharging flow while another cylinder is suctioning. Id. at 24. According to Appellant, use of Sivaramakrishnan’s technique in a two-pump system like Furey’s would not 12 Rejections three, four, and seven through ten. Appeal 2021-003762 Application 16/113,047 11 provide smooth flow, and for that reason, the references are not properly combinable. Id. at 23-25. For the reasons that follow, we agree with Appellant. Furey discloses an apparatus for pumping fluids. Furey ¶ 7. A preferred embodiment uses two synchronized fluid pump heads 100 to provide a liquid flow rate that is “relatively constant.” Id. ¶¶ 21, 38. Furey contrasts that a single pump head embodiment would deliver intermittent flow. Id. ¶ 38. In sum, Furey’s two-pump system provides relatively constant flow by synchronizing the pump heads (the first pump discharging while the second pump is suctioning, and vice versa). The Examiner relies on Sivaramakrishnan for pumping with a discharge stroke duration exceeding the suction stroke duration. Final Act. 10. Sivaramakrishnan discloses a preferred embodiment having three pumping cylinders (42, 44, 46) with pumping strokes phased 120 degrees apart. Sivaramakrishnan ¶ 24. Sivaramakrishnan discloses an embodiment having a discharge stroke (push stroke) with a longer duration than the suction stroke (pull stroke) in order to compensate for the relatively lower velocity of the push stroke so that the piston assembly has equal displacement for the discharge and suction strokes. Id. ¶ 41. In other words, because the piston has a slower velocity on the discharge stroke than on the suction stroke, the discharge stroke must have a longer duration than the suction stroke to ensure equal piston displacement. As explained above, Furey’s two-pump system provides relatively constant flow by having the first pump discharge while the second pump suctions, and vice versa. That is, the two pumps are 180 degrees out of phase. When Furey’s system is modified to operate as taught by Appeal 2021-003762 Application 16/113,047 12 Sivaramakrishnan, the two pumps would be less synchronized than before the modification because the discharge stroke would have a longer duration than the suction stroke (no longer 180 degrees out of phase). This would make the flow less constant, not more constant. See Reply Br. 6-7. The Examiner responds as if Appellant is arguing that Sivaramakrishnan is nonanalogous art. See Ans. 23-25. The Examiner also explains that use of Sivaramakrishnan’s technique with Furey’s device would provide smoother flow. See id. at 24. Appellant is not making a nonanalogous art argument; rather, as explained above, Appellant argues, and we agree, that the addition of Sivaramakrishnan’s technique to Furey’s device would reduce rather than increase the consistency of the flow. Consequently, the rejection of claims 3-7 and 14-20 is in error. 3. Result Effective Variable In light of the fact that our determination regarding the first two arguments addresses all of the remaining claims on appeal, we need not evaluate Appellant’s third argument. CONCLUSION We sustain the first, second, fifth, and sixth rejections (claims 1, 2, and 8-13), and we reverse the third, fourth and seventh through tenth rejections (claims 3-7 and 14-20). Appeal 2021-003762 Application 16/113,047 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102(a)(1) Furey 1 2 103 Furey, Oguma 2 3-5, 7, 14- 16 103 Furey, Sivaramakrishnan 3-5, 7, 14- 16 6 103 Furey, Sivaramakrishnan, Peeler 6 8-12 103 Furey, Jackson 8-12 13 103 Furey 13 17 103 Furey, Sivaramakrishnan, Fehr 17 18 103 Furey, Sivaramakrishnan, Oguma 18 19 103 Furey, Sivaramakrishnan, Fehn 19 20 103 Furey, Sivaramakrishnan, Oguma 20 Overall Outcome 1, 2, 8-13 3-7, 14-20 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). AFFIRMED IN PART