Engip LLC

Patent Trials and Appeals Board

Apr 16, 2020

15360861 - (D) (P.T.A.B. Apr. 16, 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.
15/360,861 11/23/2016 Clifford Lee Hilpert 3260-01201 1265
62763 7590 04/16/2020
TOD T. TUMEY
TUMEY LLP
P.O. BOX 22188
HOUSTON, TX 77227-2188
EXAMINER
VILLALUNA, ERIKA J
ART UNIT PAPER NUMBER
2852
MAIL DATE DELIVERY MODE
04/16/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLIFFORD LEE HILPERT, LEWIS JACKSON DUTEL,
LAURA TUFTS MEYER, JEFFERY HILPERT, and
DAVID WILLIAM BLACKLAW

Appeal 2019-003348
Application 15/360,861
Technology Center 2800
____________

Before ROMULO H. DELMENDO, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–5.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42—namely, “Engip LLC” (Application Data Sheet filed
November 23, 2016 at 6), which is also identified as the real party in interest
(Appeal Brief filed September 11, 2018 (“Appeal Br.”) at 3).
2 See Appeal Br. 7–8; Reply Brief filed March 25, 2019 (“Reply Br.”) at 2;
Non-Final Office Action entered February 2, 2018 (“Non-Final Act.”)
at 2–6; Examiner’s Answer entered January 23, 2019 (“Ans.”) at 3–4.
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Application 15/360,861
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I. BACKGROUND
The subject matter on appeal relates to “a method of testing a closed
hydraulic system[,] for example[,] a blowout preventer (BOP) assembly for
leaks” used in oil and gas exploration risk management (Specification filed
November 23, 2016 (“Spec.”) ¶ 1). According to the Inventors,
[t]he improved hydrostatic test method provides for a means of
resolving the nonlinear relationship between volumetric loss and
test pressure utilizing either a pressure decay rate method test or
a volumetric leak rate method test of a hydrostatic pressure test
into a single dimensionless number that approximates the
diameter of an orifice
(id. ¶ 4).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A method of pressure testing a fluid system for leaks at a
specified test pressure comprising[:]
a) pressurizing the system to the specified test
pressure by introducing pressure intensifying
fluid under pressure into the system,
b) measuring for a finite time period an amount
of added intensifying fluid required to
maintain the system at the specified test
pressure, and
c) determining an apparent orifice factor.
(Appeal Br. 9 (emphasis added)).

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II. REJECTIONS ON APPEAL
The claims on appeal stand rejected, as follows:
A. Claim 1 stands rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Maresca, Jr. et al.3 (“Maresca”);
B. Claims 2, 4, and 5 stand rejected under 35 U.S.C. § 103 as
unpatentable over Maresca; and
C. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable
over Maresca in view of Veeningen.4
(Ans. 3–4; Non-Final Act. 2–6).
III. DISCUSSION
Rejection A. The Examiner finds that Maresca describes a method
for pressure testing a fluid system comprising pressurizing the system to a
specified test pressure by introducing a pressure-intensifying fluid,
measuring for a finite period of time the amount of added intensifying fluid
required to maintain the system at the specified test pressure, and
determining a temperature-compensated volume change rate as an indication
of leakage (Non-Final Act. 3). The Examiner explains that giving the
language “apparent orifice factor,” as recited in claim 1, its broadest
reasonable interpretation consistent with the Specification, Maresca’s
temperature-compensated volume loss rate would be indicative of a diameter
of any leak orifice, and, therefore, Maresca anticipates (id.; Ans. 3).
The Appellant’s only argument against the rejection of claim 1 is that
[i]t is improper for the [E]xaminer to ignore the specification
while determining the scope of the claim and it is improper for

3 US 5,090,234, issued February 25, 1992.
4 US 2013/0111985 A1, published May 9, 2013.
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Application 15/360,861
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the [E]xaminer to arbitrarily characterize[] portions of the prior
art in a way inconsistent with the express teachings of the
specification and the claim language of the application being
examined.
(Appeal Br. 7).
The Appellant’s argument fails to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Contrary to the Appellant’s allegation, the Examiner’s rejection takes
account of the Specification in construing the disputed claim limitation
“apparent orifice factor” (Ans. 3; Non-Final Act. 3). In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation. As this court has discussed, this methodology
produces claims with only justifiable breadth.”).
Dependent claim 2, which further limits claim 1 (i.e., narrower in
scope than claim 1), recites that the “apparent orifice factor is determined by
following formula 0=Vi/√P where 0 = apparent orifice factor, Vi =
volumetric loss rate, and P = test pressure” (Appeal Br. 9; Spec. ¶ 13). Thus,
the language “apparent orifice factor,” as recited in claim 1, is broader in
scope than and, therefore, not limited to a number calculated according to
the particular formula recited in claim 2. Furthermore, although the
Specification states that the “[a]pparent [o]rifice [f]actor [calculated using
the formula recited in paragraph 13 of the Specification and claim 2 is a]
dimensionless quantity representative of the nonlinear relationship between
volumetric loss and test pressure expressed as a single dimensionless
number that approximates the diameter of an orifice” (Spec. ¶ 14), we
construe “dimensionless” as meaning that the units of measure are simply
dropped because the apparent orifice factor that would be calculated
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according to claim 2 is not dimensionless (i.e., a volume loss rate divided by
the square root of a pressure).
Under these circumstances, we discern no reversible error in the
Examiner’s determination that a temperature-compensated change in volume
required to maintain pressure, as disclosed in Maresca, can be considered as
an “apparent orifice factor,” as broadly recited in claim 1. Specifically,
Maresca discloses a method for determining a small leak in pressurized
pipelines containing liquids such as water, petroleum, solvents, and other
chemical products (Maresca col. 5, ll. 28–31). In one embodiment, Maresca
teaches calculating a temperature-compensated volume rate that is calculated
by determining an average of two measurements of a rate of change of
volume (i.e., by calculating “[t]he average of the two measurements of the
rate of change of volume obtained when the line is pressurized is subtracted
from the rate obtained when the pressure is zero”) (id. at col. 20, ll. 30–36).
In discussing Figure 11, Maresca further teaches:
The pressure in the pipeline is measured via the pressure sensor
520, and the system controller maintains a constant pressure in
the pipeline by providing instructions to the displacement piston
device 530 and linear actuator 540 to add or remove product to
maintain this pressure at a constant level during the test. The
rate of change of volume is calculated by fitting a least squares
line to the data. The slope of the line is the rate of change of
volume at the higher pressure.
(Id. at col. 21, ll. 1–10). Therefore, Maresca describes every limitation
recited in claim 1.
Moreover, the final step of “determining an apparent orifice factor,”
as recited in claim 1, fails to confer patentability over Maresca because it is a
purely mental (mathematical) step that can be performed in the human mind
and has not been shown to affect, or be functionally related to, the claimed
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subject matter as a whole or to any physical step. In this regard, our
reviewing court has instructed:
Because claim limitations directed to mental steps may attempt
to capture informational content, they may be considered printed
matter lacking patentable weight in an obviousness analysis.
Accordingly, a limitation that merely claims information by
incorporating that information into a mental step will receive
patentable weight only if the limitation is functionally related to
the substrate.
Praxair Distribution, Inc. v. Mallinckrodt Hospital Prods. IP Ltd., 890 F.3d
1024, 1033 (Fed. Cir. 2018). See also King Pharms., Inc. v. EON Labs.,
Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010) (“The ‘informing’ [of a drug’s
increased bioavailablity] limitation adds no novelty to the method, which is
otherwise anticipated by the prior art.”).
For these reasons, we uphold the rejection as maintained against claim
1.
Rejections B & C. The Appellant does not argue any claim
separately (Appeal Br. 7–8). Therefore, we confine our discussion to claim
2, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
Claims 3–5 stand or fall with claim 2.
The Appellant’s sole argument is that the Examiner’s rejection is
based on a “sweeping statement” that “preclud[es] the possibility that a new
discovery of a relationship of known factors may be patentable no matter
what” (Appeal Br. 7). According to the Appellant, the “new relationships
are superior to the current methods in terms of accurately measuring the
integrity of fluid systems” and that “[t]hese new techniques minimize the
errors now encounter[ed] that are due to the compressibility of the liquid and
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different pressure levels as explained in paragraphs [0002] and [0003] of this
application” (id. at 8).
Again, we discern no persuasive merit in the Appellant’s argument.
Our reasoning above with respect to giving no weight to a mental step unless
the mental step has been shown to be functionally related to the claimed
subject matter applies equally to claim 2. Although the Appellant alleges
that the “new relationships are superior” (Appeal Br. 8), it fails to direct us
to any objective evidence—other than conclusory statements—in support of
the allegation. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.”); In re Lindner, 457 F.2d 506, 508 (CCPA
1972) (“[M]ere conclusory statements in the specification and affidavits are
entitled to little weight when the Patent Office questions the efficacy of
those statements.”).
Moreover, consistent with the Examiner’s position, Maresca teaches
the relationship between test pressure and rate of change of volume, as
compensated for temperature (Maresca col. 20, l. 30–col. 21, l. 10).
Therefore, it would have been obvious to a person having ordinary skill in
the art to take these variables into account in determining the presence of a
leak in Maresca’s pipeline system.
For these reasons, we uphold the Examiner’s rejections as maintained
against claim 2 (and claims 3–5 falling therewith).

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IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 102(a)(1) Maresca 1
2, 4, 5 103 Maresca 2, 4, 5
3 103 Maresca,
Veeningen

Overall
Outcome
1–5

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED