Ex Parte Sperry et al

Patent Trial and Appeal Board

Oct 31, 2016

13089546 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/089,546 04/19/2011 Ronald Kent Sperry
23368 7590 11/02/2016
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
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.
DUR1041PA/41211.1550 1660
EXAMINER
GRABER, KARAM
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
daytonipdocket@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD KENT SPERRY
and SUBRAMANY AG. PRASAD
Appeal2015-004850
Application 13/089,546
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision finally rejecting claims 1-20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is stated to be Flowserve Management Company
(Appeal Br. 2).
Appeal2015-004850
Application 13/089,546
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key disputed limitations):
1. A method for determining an apparent density of a fluid
being displaced by a pump having a motor comprising:
receiving, at a computer, sensor data indicative of voltage,
current, and temperature of the motor;
determining an expected torque value for the pump using
at least one of the voltage, the current, or the temperature of the
sensor data and one or more sets of speed-torque relationships;
determining an actual torque for the pump, when the
pump is in operation, using at least one of the voltage, the
current, or the temperature of the sensor data;
using the expected torque and actual torque to determine
an apparent density of the fluid;
using the apparent density to detect an irregular operating
condition; and
generating an alert if the irregular operating condition is
detected.
(Appeal Br. 23 (Claims App.).)
The Examiner maintains the following rejections:
(i) claims 1, 2, and 5 are rejected under 35 U.S.C. § 102(b) as
anticipated by Beck et al. (US 7,558,699 B2, issued July 7, 2009)
(hereinafter "Beck") as evidenced by MICROMO Micro Motion Solutions
(DC Motor Calculations), published April 4, 2008,
http://www.micromo.com/motor-calculations.aspx (hereinafter
"MICRO MO");
(ii) claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck in view of "Catalysts in Petroleum Refining,"
Proceedings of Conference on Catalysts in Petroleum Refining, 171 (1989)
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Appeal2015-004850
Application 13/089,546
(hereinafter "Catalysts in Petroleum Refining"), as evidenced by
MICROMO;
(iii) claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck in view of Hays et al. (US 6,260,004 B 1, issued July
10, 2001) (hereinafter "Hays"), and further in view of Takamatsu (US
7,457,702 B2, issued Nov. 25, 2008) (hereinafter "Takamatsu"), as
evidenced by MICROMO;
(iv) claims 7, 15, 16, 18, and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Beck in view of Cox (US 4,911,893, issued Mar. 27,
1990) (hereinafter "Cox"), as evidenced by MICROMO;
(v) claims 8, 9, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck in view of Hays, as evidenced by MICROMO;
(vi) claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beck in view of Hays, and further in view of Catalysts in
Petroleum Refining, as evidenced by MICROMO;
(vii) claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Beck in view of Hays, and further in view of Cox, as evidenced by
MICROMO;
(viii) claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Beck in view of Cox, and further in view of Catalysts in Petroleum
Refining, as evidenced by MICROMO; and
(ix) claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Beck in view of Takamatsu, and further in view of Hays and Cox, as
evidenced by MICROMO.
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Appeal2015-004850
Application 13/089,546
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports Appellants' position that the Examiner has not shown the
applied prior art discloses or suggests a method that inherently includes the
claimed step of using the expected and actual torque values to determine an
apparent density of the fluid (Appeal Br. 10; Reply Br. 3--4).2 We reverse
the Examiner's§ 102(b) rejection of claims 1, 2, and 5, and§ 103 rejections
of claims 3, 4, and 6-20 for the reasons set forth in the Briefs (Appeal Br.
10; Reply Br. 3--4).
We add the following for emphasis.
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
lvet Ji;foneyilY, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference." See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d
628, 631-32 (Fed. Cir. 1987).
Inherency "may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Cont'! Can Co. USA, Inc. v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578,
2 Appellants make a number of other arguments urging reversal of the
rejections. We need not and do not address those arguments.
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Appeal2015-004850
Application 13/089,546
581 (CCP A 1981 )). An inherent characteristic must be inevitable. See
Oelrich, 666 F .2d at 581.
The Examiner contends that the process of Beck teaches the steps of:
( 1) measuring the current and voltage to determine actual motor torque (Tm)
(Ans. 2 (citing Beck 7:46-61; Fig. 3, box 36; 5:22-36; 7:11-14)) and
(2) finding estimated, or expected, torque values for the pump (Tme) (Ans. 2
(citing Beck 5:46-61; Fig. 3); see also Beck 7:46-61)). The Examiner
further finds that Beck teaches that "[t]he torque and speed values can be
correlated to fluid density through other process variables" (Ans. 2-3 (citing
Beck 10:56-65)). According to the Examiner, this correlation allows one
"to monitor average fluid density" (Ans. 3 (citing Beck 14:48-54)). In other
words, the Examiner's de facto position is that "Beck teaches [the step of]
using expected and actual torque values to determine density" (Ans. 19).
On the other hand, Appellants argue that "Beck fails to expressly or
inherently recite 'using the expected torque and actual torque to determine
an apparent density of the fluid"' (Appeal Br. 10). Appellants further argue
that the Examiner's reliance on Beck (see Ans. 2-3 (citing Beck 10:56-65))
is misplaced because "Beck never teaches calculating or measuring a fluid
density to compare to a known reference fluid density" (Reply Br. 4 ).
According to Appellants, "[t]he Examiner incorrectly interprets these
sentences [in Beck 10:56-65] as teaching that the apparent fluid density can
be determined based on an expected and actual torque" (id.).
The Examiner has not responded adequately to these arguments (Ans.
18-19), nor explained how Beck identically describes the claimed process
within the meaning of§ 102 such that it reasonably can be established that
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Appeal2015-004850
Application 13/089,546
Beck's use of Tm and Tme inevitably will determine an apparent density of
the fluid (id.).
In light of these circumstances, we agree with Appellants that the
Examiner has not satisfied the burden to establish that Beck's process
expressly or inherently determines an apparent density of the fluid through
use of the expected torque and actual torque as recited in claim 1. Although
the Examiner argues that Beck's torque values "are not the only two values
used in the calculation" to determine apparent density (Ans. 19), the
Examiner has not provided any persuasive line of technical reasoning or
evidence that the prior art process of Beck expressly discloses such a
calculation or necessarily would have resulted in determination of apparent
density as claimed (see Ans. 2-3, 18-19; Appeal Br. 10; Reply Br. 3--4).
The Examiner relies upon the same reasoning as set out for claim 1
for the§ 103 rejections of claims 3, 4, and 6-20. With respect to these
§ 103(a) rejections, the Catalysts in Petroleum Refining, Hays, Takamatsu,
and Cox references are not applied by the Examiner to correct the
aforementioned deficiencies.
Thus, the Examiner's § 102(b) rejection is reversed as to claims 1, 2,
and 5, and the Examiner's§ 103(a) rejections are reversed as to claims 3, 4,
and 6-20.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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