Ex Parte Chatfield et al

Patent Trial and Appeal Board

Dec 20, 2018

14176015 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/176,015 02/07/2014
47022 7590 12/20/2018
THE LAW OFFICE OF RICHARD W. JAMES
25 CHURCHILL ROAD
CHURCHILL, PA 15235
FIRST NAMED INVENTOR
Glen F. Chatfield
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OPT-09-001-CON 7105
EXAMINER
COMLEY, ALEXANDER BRYANT
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
12/20/2018 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 GLEN F. CHATFIELD, JOHN G. CRANDALL, and
DALE K. WELLS
Appeal2018-004953
Application 14/176,015
Technology Center 3700
Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-16. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as OPTIMUM Pumping Technology,
Inc. Appeal Br. 7.
Appeal2018-004953
Application 14/176,015
STATEMENT OF THE CASE
The Specification
According to the specification, the "invention is concerned with
reducing pulsations in fluid systems." Spec. i-f2. The invention "increases
fluid flow, reduces power consumption, or both over traditional systems,
resulting in smoother, more efficient fluid flow in a closed system." Id. ,I3.
As explained in the specification, "[t]here are always two waves
propagating in opposite directions within a pipe that has flow." Id. ,rs.
"When pipes branch or terminate, part of the [ outbound] wave continues to
propagate and the remainder of the wave reflects in the opposite direction."
Id. ,II I. "As a result of these phenomena, a compressor creates pulsations
that propagate away from it and piping that attaches to both the suction and
discharge sides of the compressor create pulsations that propagate back to
the compressor, affecting compressor performance." Id. ,II2.
The invention is directing to improving performance of a pressurized
system ( e.g., a natural gas pumping system) by reducing pressure waves at a
particular location ( e.g., at the outlet of a cylinder) at a particular time ( e.g.,
when that cylinder is discharging gas via the outlet). Spec. i-fi-f35--42.
The Rejected Claims
Claims 1-16 stand rejected. Final Act. 1. Claim 1 is representative
and reproduced below.
1. A natural gas pumping system, comprising: a
reciprocating compressor including:
a first cylinder having:
an inlet through which natural gas is received;
a first piston moving in the first cylinder; and
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Application 14/176,015
an outlet through which natural gas is discharged;
a second cylinder having:
an inlet through which natural gas is received;
a second piston moving in the second cylinder; and
an outlet through which natural gas is discharged;
a first conduit having a first end in fluid communication
with the outlet of the first cylinder, a second end in fluid
communication with a junction, and a length that provides a
pressure wave reflected from the junction at a low pressure at
the outlet of the first cylinder when the first cylinder is
discharging natural gas; and
a second conduit having a first end in fluid
communication with the outlet of the second cylinder, a second
end in fluid communication with the junction, and a length that
provides a pressure wave reflected from the junction at a low
pressure at the outlet of the first cylinder when the first cylinder
is discharging natural gas.
Appeal Br. 31 (Emphasis added).
The Appealed Rejections
The following rejections are before us for review:
1. claims 1-16 under pre-AIA 35 U.S.C. § 112 i-f2 (Final Act. 6);
and
2. claims 1-16 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over US 6,692,239 B2 issued February 17, 2004 ("Nishikawa") (id. at 9).
DISCUSSION
Rejection 1
The Examiner rejected claims 1-16 under 35 U.S.C. § 112 i-f2 for
failing to particularly point out and distinctly claim the subject matter
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Application 14/176,015
regarded as the invention. Final Act. 6. In particular, the Examiner rejects
the claims because they recite "length[ s ]" of conduits in functional terms
instead of structural terms. For example, with respect to claim 1, Appellants
claim "[a] natural gas pumping system, comprising: a reciprocating
compressor including" the following:
a first conduit having a first end in fluid communication with the
outlet of the first cylinder, a second end in fluid communication
with a junction, and a length that provides a pressure wave
reflected from the junction at a low pressure at the outlet of the
first cylinder when the first cylinder is discharging natural gas.
Appeal Br. 31 ( emphasis added).
In reference to the italicized limitation ( and similar limitations recited
in the rejected claims, also referred to as the "length" limitations), the Final
Action stated "while features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function."
Final Act. 7 (citing In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997)). The Examiner then concluded:
Claims 1-16 do not require a constant speed reciprocating
compressor, or any particular operating speed or frequency.
Thus, the claims as currently written read upon variable-speed
reciprocating compressors that change speed during operation.
With such a variable speed compressor, the operational time
points of the compressor will change accordingly. In other
words, the timings being claimed by Applicant are not
particularly defined, and as such, the required conduit lengths are
rendered indefinite. Ultimately, Applicant's claim language does
not nail down any particular conduit lengths within any of the
claims, and as such, any and all possible conduit lengths can meet
the claims as written. As such, it is not clear to those of ordinary
skill exactly how long any of the claimed conduits must be to
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Application 14/176,015
meet the invention. Stated another way, defining a fixed
structural dimension (i.e. a length) relative to a non-structural
variable (i.e. time) does not specifically point out and clearly
define the subject matter which the inventor regards as the
invention, and thus, one or ordinary skill in the art would not be
apprised of the required conduit lengths in Applicant's invention.
Final Act. 7-8.
An entry in a table of contents for the Appeal Brief portends
arguments in opposition to the Examiner's rejection. See Appeal Br. 4 ("A.
Claims 1-16 are Definite and Distinctly Claim the Subject Matter
Recited Therein"). 2 But the Appeal Brief does not contain any such
arguments. See generally Appeal Br. The Reply does contain the following
§ 112 i-f2 arguments:
Applicants submit that the lengths of conduits recited in
the claims are fixed and are structural aspects of those conduits
and that the lengths of those conduits do not vary with time.
Accordingly, Applicants submit that those conduit lengths are
clear.
Applicants furthermore point out that Applicants' claims are at
least as definite as Nishikawa's only claim, which states "the
lengths of each connecting tube are set to given lengths such that
pressure waves of the compressed gases compete with each other
at the joining point."
Reply 4. However, these arguments are late. We do not consider them. See
37 C.F.R. § 4I.37(b)(2).
2 The table of contents entry further states that "[ t ]he language of the claims
is as intended by Applicant." Appeal Br. 4. This statement does not explain
why the Examiner's rejection is in error.
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Because Appellants failed to timely present arguments in opposition
to the Examiner's rejection of claims 1-16 under 35 U.S.C. § 112 i-f2, we
summarily affirm that rejection.
Rejection 2
The Examiner rejects claims 1-16 under 35 U.S.C. § 103(a) as
unpatentable over Nishikawa. Final Act. 9. As to the "length" limitations
that are the subject of the above indefiniteness rejection, "[f]or examination
purposes, the Examiner has interpreted the claims to simply require conduits
have a length that conveys fluid flows from a respective compressor outlet to
a common junction." Id. at 8. Appellants argue against the prior art
rejection of all claims by arguing that Nishikawa does not disclose that its
conduits are of the requisite length to achieve the functions recited in the
claims. See Appeal Br. 4---6, 17-29.
In this case, the proper construction of the disputed length limitations
recited in claim 1 is intertwined with the indefiniteness rejection under 35
U.S.C. § 112, which we have affirmed. In appropriate cases, the Board may
exercise discretion to address a prior art rejection of a claim that is
indefinite. Here, although the indefiniteness rejection is sustained based
upon Appellants' lack of argument, we nonetheless determine that sufficient
uncertainty as to the metes and bounds of the claims precludes meaningful
review of the prior art rejection. Cf In re Steele, 305 F.2d 859, 862---63
(CCPA 1962).
Accordingly, we do not reach the Examiner's rejection of claims 1-16
under 35 U.S.C. § 103(a) as unpatentable over Nishikawa.
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CONCLUSION
The Examiner's rejection of claims 1-16 under 35 U.S.C. § 112 i-f2 is
affirmed. We do not reach the Examiner's rejection under 35 U.S.C.
§ 103(a).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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