Singal, Kalpesh et al.Download PDFPatent Trials and Appeals BoardMay 4, 20202019000196 (P.T.A.B. May. 4, 2020) Copy Citation 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. Appeal 2019-000196 Application 14/575,819 2 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. Appeal 2019-000196 Application 14/575,819 3 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 Appeal 2019-000196 Application 14/575,819 4 (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); Appeal 2019-000196 Application 14/575,819 5 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. Appeal 2019-000196 Application 14/575,819 6 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. Appeal 2019-000196 Application 14/575,819 7 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. Appeal 2019-000196 Application 14/575,819 8 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 Appeal 2019-000196 Application 14/575,819 9 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). Appeal 2019-000196 Application 14/575,819 10 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”). Appeal 2019-000196 Application 14/575,819 11 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 Copy with citationCopy as parenthetical citation