INNOVATIVE PRESSURE TESTING, LLC

Patent Trials and Appeals BoardMar 25, 2021

2020001740 (P.T.A.B. Mar. 25, 2021)

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. 15/107,193 06/22/2016 Charles M. FRANKLIN 3159-02201 8547 23505 7590 03/25/2021 CONLEY ROSE, P.C. 575 N. Dairy Ashford Road Suite 1102 HOUSTON, TX 77079 EXAMINER KAY, DOUGLAS ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 03/25/2021 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): pathou@conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES M. FRANKLIN and RICHARD A. CULLY Appeal 2020-001740 Application 15/107,193 Technology Center 2800 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate our affirmance as a new ground of rejection. 1 This Decision includes citations to the following documents: Specification filed June 22, 2016 (“Spec.”); Final Office Action dated January 10, 2019 (“Final Act.”); Appeal Brief filed June 10, 2019 (“Appeal Br.”); Examiner’s Answer dated November 7, 2019 (“Ans.”); and Reply Brief filed January 6, 2020. 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as IPT Global LLC. Appeal Br. 3. Appeal 2020-001740 Application 15/107,193 2 CLAIMED SUBJECT MATTER The claims are directed to a system and method for testing a pressure system. Spec. ¶¶ 3, 4–6. Independent claims 1 and 7, reproduced below, are illustrative of the claimed subject matter: 1. A system, comprising: a memory; and a processor coupled to the memory, the processor configured to: receive a description of a pressure system, including a plurality of components to be tested, each component having a required test pressure; generate a first test sequence that tests the required test pressure of each of the plurality of components, wherein the first test sequence comprises a first number of steps; iteratively generate a second test sequence that tests the required test pressure of each of the plurality of components, wherein the second test sequence comprises a second number of steps; and store a representation of at least one of the first test sequence and the second test sequence in the memory; wherein the second number of steps is less than the first number of steps. Appeal Br. 17 (Claims App.). 7. A method, comprising: receiving, by a processor, a description of a pressure system, including a plurality of components to be tested, each component having a required test pressure; Appeal 2020-001740 Application 15/107,193 3 generating, by the processor, a first test sequence that tests the required test pressure of each of the plurality of components, wherein the first test sequence comprises a first number of steps; and iteratively generating, by the processor, a second test sequence that tests the required test pressure of each of the plurality of components, wherein the second test sequence comprises a second number of steps; wherein the second number of steps is less than the first number of steps. Id. at 18. Independent claim 13 is directed to a non-transitory computer- readable medium that, when executed by a processor, causes the processor to perform the same functions (i.e., receive a description of a pressure system, generate a first test sequence, iteratively generate a second test sequence, and store a representation) as the processor recited in claim 1. Id. at 19. REJECTIONS The Examiner maintains the following rejections on appeal (Final Act. 11–26; Ans. 3)3: 3 The Answer clearly states that “[e]very ground of rejection set forth in the Office action dated 1/10/2019 . . . is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” Ans. 3. The only rejection listed under “WITHDRAWN REJECTIONS” is the rejection under 35 U.S.C. § 101. Id. Thus, the rejection of claims 5, 11, and 17 under 35 U.S.C. § 103 over Franklin, Rohrbaugh, and Toppari, and the rejection of claims 6, 12, and 18 under 35 U.S.C. § 103 over Franklin, Rohrbaugh, and Nishino stand and are before us on appeal. Appeal 2020-001740 Application 15/107,193 4 Rejection 1: Claims 1–4, 7–10, and 13–16 are rejected under 35 U.S.C. § 103 over Franklin4 and Rohrbaugh5; Rejection 2: Claims 5, 11, and 17 are rejected under 35 U.S.C. § 103 over Franklin, Rohrbaugh, and Toppari;6 and Rejection 3: Claims 6, 12, and 18 are rejected under 35 U.S.C. § 103 over Franklin, Rohrbaugh, and Nishino.7 DISCUSSION Franklin teaches systems and methods for detecting leaks and for testing pressure integrity of a pressure system. Franklin ¶ 2. The Examiner finds Franklin teaches that its leak detection system includes a pressure system, a computer system, a software application, which is configured to accept and store data on a computer readable medium (memory), such as a hard drive or flash memory, and a pressure sensor in fluid communication with the pressure system and in electrical communication with the computer system, configured to sense test pressures and transmit a signal reflective of the test pressures to the computer to be stored on the computer readable medium. Final Act. 12 (citing Franklin ¶ 15). The Examiner finds that a computer normally includes a processor coupled to the memory. Final Act. 12. As to the processor, the Examiner finds that Franklin teaches that its leak detection system can further include a software application configured to receive a description of the pressure system, including components to be 4 Franklin et al., US 2012/0150455 A1, published June 14, 2012. 5 Rohrbaugh et al., US 6,865,706 B1, issued March 8, 2005. 6 Toppari et al., US 2012/0083928 A1, published April 5, 2012. 7 Nishino et al., US 2014/0373935 A1, published Dec. 25, 2014. Appeal 2020-001740 Application 15/107,193 5 tested, where each component has a required test pressure. Id. at 12–13 (citing Franklin ¶¶ 15, 18). The Examiner finds that Franklin teaches that its leak detection system, using a computer and a software application, can be adapted to create a test plan (a sequence of test steps) that tests the pressure of multiple components, and also teaches that such tests may be iterative. Final Act. 13 (citing Franklin ¶¶ 10, 146, 182). Franklin teaches “a single test step may only test one aspect of the component, and components having multiple aspects may require multiple test steps to test each of these aspects and achieve a complete pressure test.” Franklin ¶ 156. Thus, Franklin teaches or fairly suggests that a test sequence can include a number of steps. Franklin teaches that “[d]uring the test planning stage, the user must provide information defining what constitutes adequate test coverage for that test plan, as well as design the test steps used in the test plan to satisfy the requirements for test coverage.” Id. ¶ 213. Franklin discloses that “a single test step may only test one aspect of the component, and components having multiple aspects may require multiple test steps to test each of these aspects and achieve a complete pressure test.” Id. ¶ 156. Moreover, Franklin discloses that “one test step can test aspects from multiple components at once.” Id. Based on those teachings in Franklin, it would have been obvious to one of ordinary skill in the art to design Franklin’s leak detection system to include first and second test sequences where the number of steps in the second test sequence is less than the number of test steps in the first test sequence. To repeat a test sequence, i.e., generate a first test sequence, and iteratively generate a second test sequence, where the number of steps in the second test sequence is less than the number of steps in the first test Appeal 2020-001740 Application 15/107,193 6 sequence as encompassed in the present claims, would have required no more than ordinary creativity to enhance the leak detection system and thus would have been prima facie obvious to one of ordinary skill in the art. It is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In view of the foregoing, Franklin’s teachings alone support a conclusion that claim 1’s system, claim 7’s method, and claim 13’s non- transitory computer-readable medium would have been obvious to a person having ordinary skill in the art. Thus, we sustain the Examiner’s obviousness rejection of claims 1, 7, and 13 over Franklin and Rohrbaugh. Because we have relied on facts and reasoning not raised by the Examiner, we designate our affirmance of claims 1, 7, and 13 as a new ground of rejection. In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis . . . alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”). The Examiner only relies on Rohrbaugh to exemplify well-known methods of producing an optimal test set. Ans. 5. Because the new ground of rejection does not rely on Rohrbaugh, it is not necessary to address Appellant’s arguments that the Examiner’s proposed combination would impermissibly change Franklin’s principle operation and the Examiner has not a provided a sufficient reason for combining Franklin and Rohrbaugh (Appeal Br. 14–15). Appeal 2020-001740 Application 15/107,193 7 Appellant does not present arguments in support of the separate patentability of any of the dependent claims on appeal. Therefore, we also sustain the Examiner’s obviousness rejections of dependent claims 2–6, 8– 12, and 14–18. However, our affirmance of those claims is designated a new ground of rejection by virtue of the dependency of claims 2–6, 8–12, and 14–18 on the newly rejected independent claims. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed8 Reversed New Ground 1–4, 7– 10, 13– 16 103 Franklin, Rohrbaugh 1–4, 7–10, 13–16 1–4, 7– 10, 13– 16 5, 11, 17 103 Franklin, Rohrbaugh, Toppari 5, 11, 17 5, 11, 17 6, 12, 18 103 Franklin, Rohrbaugh, Nishino 6, 12, 18 6, 12, 18 Overall Outcome 1–18 1–18 RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: 8 As explained above, our affirmance is designated as a new ground of rejection. Appeal 2020-001740 Application 15/107,193 8 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R. § 41.50(b)