Ex Parte Patterson

Patent Trial and Appeal Board

Sep 23, 2013

11053979 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DWIGHT L. PATTERSON
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Appeal 2011-008764
Application 11/053,979
Technology Center 3700
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Before GAY ANN SPAHN, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-3, 5-9, 13-21, and 23-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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Claimed Subject Matter
The claimed subject matter relates “generally to sub-surface fluid
recovery pumping systems for natural gas ‘Stripper’ or older production
wells,” and “[m]ore particularly, . . . to a pneumatic displacement . . . of low
volumes of well fluids from low pressure natural gas production wells,” and
“[s]pecifically, . . . to the provision of . . . [an] apparatus for pneumatic
displacement pumping, incorporating . . . a compressed gas source that
cooperates to cause the down-well pump to remove all types of well liquids
entering an older natural gas production well.” Spec., para. [0002]. Claim
1, reproduced below, is illustrative of the appealed subject matter.
1. An apparatus comprising:
a piston having first and second opposing surfaces,
wherein the first surface has a first surface area substantially
larger that a second surface area of the opposing second
surface, the first and second opposing surfaces being down a
well having both gas and liquid therein;
means for receiving into the well the well gas that has
been:
taken from the well;
lubricated above the ground surface of the well;
and
compressed above the ground surface of the well;
means for applying the received compressed and
lubricated well gas as a force over the first surface area,
whereby the piston is lubricated by the received
compressed and lubricated well gas in the well; and
means for transferring the force that is applied to the first
surface area over the second surface area to expel the liquid
from the well.

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Rejections
Appellant requests review of the following Examiner’s rejections:
I. claim 6-9 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention;
II. claims 1, 6, 9, 13-15, 24, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Ridley (US 5,860,795, issued Jan. 19, 1999), Jordan (US
6,244,836 B1, issued Jun. 12, 2001), Spencer (US 5,013,218, issued May 7,
1991), and Klaeger (US 3,933,175, issued Jan. 20, 1976);
III. claims 2, 3, 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Ridley, Jordan, Spencer, Klaeger, and Geyer (US
4,830,113, issued May 16, 1989);1
IV. claims 5, 18, 21, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Ridley, Jordan, Spencer, Klaeger, and Etzkorn (US
6,585,050 B1, issued Jul. 1, 2003);2 and
V. claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Ridley, Jordan, Spencer, Klaeger, Etzkorn, and Geyer.3

1, 2, 3 Although the Examiner’s ground of rejection sets forth the references in
a different order, the body of the rejection relies upon Ridley as the primary
reference that is being modified. See Ans. 9-15. With respect to some of the
rejections, Appellant appears to recognize the order of the references as
listed supra. See Br. 35 and 36, subheadings A, and Br. 37, subheading B.
Regardless, we list the references in the order they were applied with respect
to the rejection labeled “II” supra. See In re Bush, 296 F.2d 491, 496
(CCPA 1961) (“[W]here a rejection is predicated on two references each
containing pertinent disclosure which has been pointed out to the applicant,
we deem it to be of no significance, but merely a matter of exposition, that
the rejection is stated to be on A in view of B instead of on B in view of A,
or to term one reference primary and the other secondary.”).
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OPINION
Rejection I – Indefiniteness
Independent claim 6 recites “[a]ny pump in a well that has both gas
and liquid therein, the pump having a piston with a larger surface area and a
smaller surface area.”
The Examiner determines claim 6 to be indefinite because of “the
phrase ‘Any pump’” since “not all pumps have ‘a piston with a large surface
area and a smaller surface area.’” Ans. 3. The Examiner notes that, for
example, “rotary pumps don’t even have a piston,” and the Examiner
suggests that replacing the word “‘Any’” with the word “‘A’” would
overcome the indefiniteness rejection. Ans. 4.
Appellant cites to the Manual of Patent Examining Procedure
(MPEP) § 2111.03 (8th Ed., Rev. 9, Aug. 2012), entitled “Transitional
Phrases” and more particularly, to a subsection, entitled “OTHER
TRANSITIONAL PHRASES.” Br. 16. Appellant argues that the word
“‘[a]ny’” in claim 6 is an “open-ended transition[al] phrase.” Br. 17.
Appellant also argues that “the plain meaning of claim 6, as recited, is both
particular and specific,” and the Examiner “improperly rejects claim[] 6 . . .
under 35 U.S.C. § 112, second paragraph, as being indefinite.” Br. 17-18.
We do not agree with Appellant that the word “[a]ny” in claim 6 is a
transitional phrase. Rather, claim 6 is directed to “[a]ny pump in a well that
has both gas and liquid therein,” and the transitional phrase in the claim is
the word “having.” However, turning to the issue of whether the recitation
of “[a]ny pump” in claim 6 is indefinite, we note that the second paragraph
of 35 U.S.C. § 112 requires claims to “set out and circumscribe a particular
area with a reasonable degree of precision and particularity.” In re Johnson,
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558 F.2d 1008, 1015 (CCPA 1977). In making this determination, “the
definiteness of the language employed [in the claims] must be analyzed not
in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.” Id.
The examiner’s focus during examination of claims for compliance
with the requirement for definiteness of 35 U.S.C. § 112, second paragraph,
is whether the claims meet the threshold requirements of clarity and
precision, not whether more suitable language or modes of expression are
available. Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as precise as the
examiner might desire. If the scope of the invention sought to be patented
cannot be determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
In the instant case, Appellant’s Specification makes it clear that the
invention is not dependent upon any particular kind of pump, but requires a
pump that can function in a well environment in which both gas and liquid
are present. See Spec., paras. [0002], [0009]-[0014], [0019], [0025]-[0026],
[0028]-[0029], [0031]-[0034], and [0038]-[0039]. The Specification also
makes clear that the pump must be of the type having a piston with a larger
surface area and a smaller surface area such that the larger surface area is
driven by compressed and lubricated gas from the well which in turn drives
the smaller surface area to pump the liquid from the well. Spec., paras.
[0029], [0031]-[0034] and Figs. 2-5, reference numerals 36, 39. As such,
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the claim is not unclear. Therefore, the recitation in the claims of “[a]ny
pump” is definite.
Accordingly, we do not sustain the Examiner’s rejection of claim 6
and claims 7-9 dependent thereon, under 35 U.S.C. § 112, second paragraph,
as indefinite.

Rejection II – Obviousness based on Ridley, Jordan, Spencer, and Klaeger
Appellant argues independent claims 1, 6, and 13 as a group and has
not presented arguments for the patentability of claims 9, 14, 15, 24, and 25
apart from independent claims 1, 6, and 13. See Br. 18-34. We select
independent claim 1 as the representative claim, and claims 6, 9, 13-15, 24,
and 25 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Ridley substantially discloses the subject
matter of independent claim 1, but fails to explicitly disclose that: (1) natural
gas from a well can be drawn to the land (ground) surface, compressed to a
sufficient pressure, and subsequently at least a portion of the compressed gas
is used to drive a gas driven piston pump that pumps liquid from the well to
the land (ground) surface, which is taught by Jordan; (2) a gas driven piston
pump disposed in a well is capable of being driven by compressed gas that is
delivered from the land (ground) surface down into the well for pumping
liquid from the well to the land (ground) surface, which is taught by
Spencer; and (3) natural gas that drives a gas driven piston pump is oiled by
an oiler before it drives the piston, and the actuated piston pumps liquid
from the well to the (ground) surface, which is taught by Klaeger. Ans. 4-7.
Appellant argues that all of Ridley, Jordan, Spencer, and Klaeger are
non-analogous to the presently claimed subject matter. Br. 24, 28, 29-30,
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31. For instance, Appellant states that: (1) “the solid steel sucker rods
pumping technology of Ridley is non-analogous to the claimed compressed
natural gas pumping technology”; (2) “Jord[a]n is . . . non-analogous to [the]
compress[ed] gas piston driving technology of the claimed invention”; (3)
“[t]h[e] skimmer technology taught by Spencer to remove oil at the oil-water
interface is non-analogous to forcing compressed natural gas from a natural
gas well back into the natural gas well in order to drive a piston in a pump
located down in the natural gas well”; and (4) “the piston driven solid rod
technology of Klaeger [is] non-analogous to piston driven compressed
natural gas technology of the claimed invention.” Id.
“The analogous-art test requires that the Board show that a reference
is either in the field of the [Appellant’s] endeavor or is reasonably pertinent
to the problem with which the inventor was concerned in order to rely on
that reference as a basis for rejection.” In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992). Broadly stated the field of Appellant’s endeavor is pumps,
and all of Ridley, Jordan, Spencer, and Klaeger are in that field. Ridley is
directed to a “method for underground-reservoir fluids production with
pump drive contained within the wellbore,” Jordan is directed to “well pump
actuated by natural gas,” Spencer is directed to a “submersible pneumatic
pump for [a] water table,” and Klaeger is directed to a device “developed for
utilization in a pneumatic oil well pump actuator. Ridley, Title; Jordan,
Title; Spencer, Title; and Klaeger, Abstr. Emphasis and capitalization in the
titles omitted. Thus, we are not persuaded of Examiner error by Appellant’s
non-analogous art arguments.
Turning to Ridley, Appellant argues that it “teaches against the use of
a compressor to provide pressure that is sufficient to drive a pneumatic
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pump that [is] disposed in the well.” Br. 20. More particularly, Appellant
quotes Ridley’s statement that it
is costly and complex to “introduce pressurized gas into the
well from an outside source in addition to the natural gas from
the reservoir” because “the introduction of the pressurized gas
into the well to lift the liquids requires the use of a compressor
which tends to increase both the cost and complexity of the
production apparatus required.”
Br. 23 (quoting Ridley, col. 2, ll. 2-8).
The Examiner responds that “[t]he compressor discussion that the
[A]ppellant is referring to is in the ‘Background Art’ section of the Ridley
reference which is intended to summarize various prior art systems
available, and is not intended to prohibit modifications to the invention.”
Ans. 18. The Examiner also responds that Ridley “clearly state[s] that the
pressurized gas (produced by the compressor) is introduced IN ADDITION
to the natural gas from the reservoir, probably when the pressure of the
natural gas is insufficient to drive the pump,” and “[t]he use of a compressor
is therefore a SOLUTION[,] if the gas pressure is insufficient.” Ans. 18
(citing Ridley, col. 2, ll. 3-5 and col. 1, ll. 49-52).
Appellant’s argument is not persuasive because in order to “teach
away” a reference must “criticize, discredit, or otherwise discourage the
solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Further, although the use of compressors may add cost and complexity, the
Examiner cites to MPEP § 2145 VII, entitled “ARGUING ECONOMIC
INFEASIBILITY,” which states that “‘[t]he fact that a combination would
not be made by businessmen for economic reasons does not mean that a
person of ordinary skill in the art would not make the combination because
of some technological incompatibility.’” Ans. 20 (citing In re Farrenkopf,
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713 F.2d 714 (Fed. Cir. 1983)). Thus, it is the Examiner’s position, and we
agree, that “the added expense of using a compressor when gas pressure is
insufficient would not discourage one of ordinary skill in the art from
seeking the convenience expected therefrom.” Id.
Next, Appellant argues that “Jord[a]n neither teaches, suggests, nor
implies sending the compressed gas back down into the well.” Br. 21. More
particularly, Appellant notes that Jordan discloses pumpjack technology
such that “the piston in Jord[a]n’s pump is . . . moved by a solid object,
whereas the piston of [the] claimed invention is not.” Br. 25. Appellant also
argues that “Jordan takes gas from a well and then uses the removed well
gas to operate its above-the-ground solid-sucker-rod-to-piston lifting
mechanism.” Br. 27. Stated another way, Appellant argues that “[b]ecause
Jord[a]n’s piston is moved by a solid object, Jordan does not teach moving a
piston by the use of compressed and oiled natural gas that has been sent back
down a well,” and “[n]or does Jordan teach a piston that, by virtue of the
areas of its pumping surfaces, multiplies its pumping force.” Id.; see also
Br. 29. Finally, Appellant also argues that “Jordan does not teach
compressed and oiled gas, that compressed gas is oiled before use, or the
oiling of gas.” Id.; see also Br. 29.
However, Appellant’s arguments are without merit as they are
addressing the Jordan reference individually, and one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Examiner only relies upon: Jordan to show that natural gas can be
drawn from a well to the ground surface and compressed to drive a piston
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pump that pumps liquid from a well; Spencer to show a gas driven pump
disposed in a well capable of being driven by compressed gas delivered from
the ground surface into the well for pumping liquid from the well to the
ground surface; and Klaeger to show oiling of compressed gas. See Ans. 16.
Appellant also argues that “Spencer’s teaching of putting compressed
‘air’ into a water well is . . . teaching against solutions to the problems
inherent with natural gas wells,” because if compressed air is injected into a
natural gas well it will create a “combustible gas mixture well [that] will
likely cause an explosion.” Br. 30. We are not persuaded by Appellant’s
arguments because again Appellant appears to be attacking Spencer
individually when the Examiner’s rejection relies on a combination of the
references. More particularly, as stated by the Examiner, the rejection only
relies on Spencer for its teaching of a pneumatic pump disposed in a well
that is capable of being driven by compressed gas that can be supplied from
the ground surface and delivered down well. Ans. 18-19. In other words,
the rejection does not rely on Spencer for teaching that the gas supplied
downhole is air, but rather, relies on Jordan for its teaching of running a
pump using compressed natural gas. Id.
Appellant also argues that “Klaeger’s method of operation is
dramatically different than that of the claimed invention.” Br. 31. For
instance, Appellant notes that Klaeger: (1) “operates at deeper depths via
energy that is transmitted via sucker rods, . . . like Ridley and Spencer”; (2)
“needs heavy sucker rods moving within a well in order to operate a piston
in a pump in the well”; (3) “does not teach a piston down in a well that is
being moved by lubricated and compressed gas”; (4) “does not teach
removing well gas from a well, compressing and lubricating the removed
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well gas, and then sending the compressed and lubricated well gas back
down into the well in order to drive a piston of a ‘down well’ pump, where
the structure of the piston causes it to function as a pressure ‘multiplier’”;
and (5) “teaches an above-ground pumping mechanism that the claimed
invention does not recite.” App. Br. 31-32. We again are not persuaded by
Appellant’s arguments because they are attacking the Klaeger reference
individually when the Examiner’s rejection relies on a combination of the
Ridley, Jordan, Spencer, and Klaeger references. Indeed, the Examiner’s
rejection only relies on Klaeger to teach that it is known to use oiled
compressed gas for use in driving a piston. Ans. 7, 16.
Finally, Appellant argues that there is “a lack of motivation to one of
ordinary skill in the relevant art to combine Klaeger with Ridley, Spencer or
Jordan due to . . . the prohibitive cost to practice the claimed invention with
Klaeger.” Id. The Examiner concluded that it would have been obvious to
one of ordinary skill in the art to modify the combination of Ridley, Jordan,
and Spencer, by the teachings of Klaeger, to incorporate an oiler for
lubrication purposes. Ans. 7. Appellant has not pointed to any evidence
showing that the use of the Klaeger oiler would be cost prohibitive, but
instead only relies on attorney argument. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“attorney argument [is] not the kind of factual
evidence that is required to rebut a prima facie case of obviousness”). In
addition, the Appellant has not shown that the Examiner’s articulated
reasoning lacks rational underpinning. See KSR Int'l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007) (holding that “[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness.”) (internal citation and quotations omitted).
Thus, Appellant has not apprised us of Examiner error.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 6, 9, 13-15, 24, and 25 which fall therewith, under 35
U.S.C. § 103(a) as unpatentable over Ridley, Jordan, Spencer, and Klaeger.

Rejection III – Obviousness based on
Ridley, Jordan, Spencer, Klaeger, and Geyer
Appellant argues that “the application of Geyer to reject claims 2-3, 7-
8 and 16-17 is moot for failure to teach the elements of the corresponding
independent claims from which they depend which are not, as discussed
above, taught, suggested, or implied, either alone or in any combination, by
Ridley, Jordan, Spenser, or Klaeger.” App. Br. 36. For the reasons
discussed supra, we found nothing lacking in the Examiner’s combination of
Ridley, Jordan, Spencer, and Klaeger. Accordingly, we sustain the
Examiner’s rejection of claims 2, 3, 7, 8, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Ridley, Jordan, Spencer, Klaeger, and Geyer.

Rejection IV – Obviousness based on
Ridley, Jordan, Spencer, Klaeger, and Etzkorn
Appellant’s arguments with respect to the Examiner’s rejection of
claims 5, 18, 21, and 23 are based on the wrong combination of references.
See App. Br. 36-38. More particularly, Appellant’s arguments address the
combination of Ridley, Jordan, Spencer, Klaeger, and Geyer, but the
Examiner’s rejection of claims 5, 18, 21, and 23 is based on Ridley, Jordan,
Spencer, Klaeger, and Etzkorn. Id.; see also Ans. 12-14. Accordingly, we
are not persuaded by Appellant’s arguments and we sustain the Examiner’s
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rejection of claims 5, 18, 21, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Ridley, Jordan, Spencer, Klaeger, and Etzkorn.

Rejection IV – Obviousness based on
Ridley, Jordan, Spencer, Klaeger, Etzkorn, and Geyer
Appellant argues that “the application of Etzkorn to reject claims 19
and 20 is moot for failure to teach the elements of the corresponding
independent claims from which they depend which are not, as discussed
above, taught, suggested, or implied, either alone or in any combination, by
Jordan, Klaeger, Spencer, Ridley, Etzkorn and Geyer.” App. Br. 39. For the
reasons discussed supra, we found nothing lacking in the Examiner’s
combination of Ridley, Jordan, Spencer, Klaeger, and Etzkorn.
Accordingly, we sustain the Examiner’s rejection of claims 19 and 20 under
35 U.S.C. § 103(a) as unpatentable over Ridley, Jordan, Spencer, Klaeger,
Etzkorn, and Geyer.

DECISION
We REVERSE the Examiner’s decision to reject claim 6-9 under 35
U.S.C. § 112, second paragraph, as indefinite.
We AFFIRM the Examiner’s rejections of: claims 1, 6, 9, 13-15, 24,
and 25 as unpatentable over Ridley, Jordan, Spencer, and Klaeger; claims 2,
3, 7, 8, 16, and 17 as unpatentable over Ridley, Jordan, Spencer, Klaeger,
and Geyer; claims 5, 18, 21, and 23 as unpatentable over Ridley, Jordan,
Spencer, Klaeger, and Etzkorn; and claims 19 and 20 as unpatentable over
Ridley, Jordan, Spencer, Klaeger, Etzkorn, and Geyer.
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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

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