Erland Falk. Hansen et al.Download PDFPatent Trials and Appeals BoardSep 17, 201914360191 - (D) (P.T.A.B. Sep. 17, 2019) Copy Citation 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. 14/360,191 05/22/2014 Erland Falk Hansen VWS-644US 5090 83583 7590 09/17/2019 Wood, Herron & Evans, LLP (Vestas Wind Systems) 441 Vine Street 2700 Carew Tower Cincinnati, OH 45202 EXAMINER TRAVERS, MATTHEW P ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 09/17/2019 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): mhines@whe-law.com usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERLAND FALK HANSEN, MORTEN MOGENSEN, and MADS DAMGAARD ____________ Appeal 2018-008986 Application 14/360,191 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Non-Final Office Action dated May 25, 2018 (“Non-Final Act.”), rejecting claims 1–14 and 17 under 35 U.S.C. § 102(e) as being anticipated by Signore (US 8,500,400 B2, iss. Aug. 6, 2013).2,3 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Vestas Wind Systems A/S. Appeal Br. 1. 2 Claims 15 and 16 are withdrawn. Non-Final Act. 1; Appeal Br. 1. 3 The Examiner withdrew a rejection of claims 1, 6, 8, 9, 12, and 17 under 35 U.S.C. § 102(a) as being anticipated by Nakamura (JP 2011-163119 A, pub. Aug. 25, 2011). Non-Final Act. 6; Ans. 2. Appeal 2018-008986 Application 14/360,191 2 SUMMARY OF THE INVENTION Appellant’s claimed invention relates to a tool for moving a wind turbine drivetrain component. Spec. 1, ll. 6–7. Claims 1, 9, and 17 are independent. Claim 1, reproduced below from page 17 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. A horizontal axis wind turbine, comprising: a nacelle including a nacelle structure; a rotor defining a rotational axis; a drivetrain component connected to the rotor; and a tool for moving the drivetrain component in the nacelle, the tool including: at least one drive unit for moving the component in relation to the nacelle in a direction parallel to the rotational axis of the rotor, wherein the at least one drive unit generates a motive force that causes the movement of the component in relation to the nacelle, and a plurality of position adjustment devices adapted to be located between the nacelle structure and the component, and distributed so that rotational movement of the component can be provided by coordinated control of the position adjustment devices, wherein at least one of the position adjustment devices is arranged below an uppermost aspect of the component. ANALYSIS The Examiner finds that claims 1–14 and 17 of the instant application, which claims priority to a provisional application filed on December 7, 2011, are anticipated by Signore, which was filed on September 20, 2011. Non-Final Act. 3–6. Attempting to swear behind Signore and disqualify the reference as prior art, Appellant submitted a Declaration of Mark Irons under 37 C.F.R. § 1.131, dated May 10, 2018 (hereinafter “Declaration” or “Decl.”), accompanied by a number of documentary exhibits in support thereof. See Exhibits A–L (entered into the record on May 10, 2018). Appeal 2018-008986 Application 14/360,191 3 The Examiner determines that Appellant’s proffered evidence is sufficient to establish conception prior to Signore’s filing date. See Ans. 2 (“Exhibits A–C (all dated prior to the reference date) taken together would be sufficient to establish conception”). However, the Examiner determines that the evidence is insufficient to adequately establish diligence from conception to the filing date of the provisional application. Non-Final Act. 2; see Ans. 2–3 (determining that “the evidence presented in the Declaration [is] not sufficient to clearly establish diligence”). The Examiner explains that “[t]he question of diligence arises from several relatively large apparent lapses in activity between the dates of the exhibits, some as large as about three weeks.” Ans. 4. According to the Examiner, the “Declaration, while listing several exhibits and their dates, does not provide any explanation or excuse for the notable delays . . ., and further relies on some exhibits where no specific dates have been provided.” Id. Appellant argues that “the Examiner’s position that the Irons Declaration is insufficient to establish diligence is in error.” Appeal Br. 9. In particular, Appellant asserts that the Declaration and exhibits, “taken as a whole, clearly establish both conception of the invention prior to Signore’s filing date and reasonably continuous diligence from prior to Signore’s filing date to the filing of the provisional application.” Id. (footnote omitted). Thus, the only issue for review on appeal is whether the Examiner erred in finding that the Declaration and exhibits are insufficient to establish diligence by Appellant from conception prior to the filing date of Signore to the filing date of the provisional application to which the instant application claims priority. See Appeal Br. 8 (“Accordingly, the only remaining issue with respect to the rejection based on Signore is whether the Irons Appeal 2018-008986 Application 14/360,191 4 Declaration and exhibits thereto establish reasonably continuous diligence from prior to Signore’s filing date through the filing of the provisional application.”); Ans. 3 (“The only outstanding issue is that of whether the 5/10/2018 Declaration adequately establishes diligence.”). “When any claim of an application . . . is rejected, the applicant . . . may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference . . . on which the rejection is based.” 37 C.F.R. § 1.131(a). “In determining priority of invention . . ., there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.” 35 U.S.C. § 102(g)(2). “Reasonable diligence must be shown throughout the entire critical period, which begins just prior to the competing reference’s effective date and ends on the date of the invention’s reduction to practice.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016). “Diligence turns on the factual record.” In re Steed, 802 F.3d 1311, 1317 (Fed. Cir. 2015); see also 37 C.F.R. § 1.131(b). A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence. Under this standard, an inventor is not required to work on reducing his invention to practice every day during the critical period. And periods of inactivity within the critical period do not automatically vanquish a patent owner’s claim of reasonable diligence. Perfect Surgical, 841 F.3d at 1009 (internal citations omitted). Appeal 2018-008986 Application 14/360,191 5 In determining whether an invention antedates another, the point of the diligence analysis is not to scour the [applicant’s] corroborating evidence in search of intervals of time where the [applicant] has failed to substantiate some sort of activity. It is to assure that, in light of the evidence as a whole, “the invention was not abandoned or unreasonably delayed.” . . . One must weigh the collection of evidence over the entire critical period to make such a determination. Id. (emphasis added) (citing Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006)). Here, we agree with Appellant that the Examiner erred in determining that the Declaration and exhibits are insufficient to establish diligence during the critical period. Rather than weighing the evidence as a whole over the entire critical period, the Examiner focused only on portions of the critical period for which there are “lapses” of time between exhibit dates. Ans. 4. In other words, the Examiner merely scoured the evidence searching for time intervals where no activity is substantiated. See Perfect Surgical, 841 F.3d at 1009. For Example, the Examiner questions Appellant’s diligence between October 17, 2011 and November 14, 2011 because corresponding Exhibits F–I “have not been associated with any specific dates as is required (MPEP 715.07 II.), either in the exhibits themselves (which are mostly illegible) or in the body of the Declaration itself (see page 4, section 11).” Ans. 4. Yet, the Examiner does not appear to weigh the corresponding Declaration evidence stating that, “[a]s can be seen from the screen captures [of Exhibits F–I], the inventors continued to refine the technology throughout October and November 2011.” Decl. ¶ 11. Additionally, Mr. Irons avers that: Exhibit B is “dated September 7, 2001,” and “the images shown on pages 9 and 14-18 are substantially similar to FIGS. 4A-4C and 6A-6C of the” application (id. ¶ 7); “Exhibit C is a draft design description Appeal 2018-008986 Application 14/360,191 6 dated September 15, 2011” (id. ¶ 8); “Exhibit D is an email exchange [occurring September 26–27, 2011,] between Magnus Holmberg (the attorney at Vestas who was responsible for this application in its early stages) and outside counsel (both U.S. and foreign) regarding the invention” (id. ¶ 9); “Exhibit E is a PowerPoint presentation dated October 17, 2011” (id. ¶ 10) that contains illustrations of a tool that appears to correspond to the recited tool; “Exhibit J is a draft requirement specification dated November 15, 2011” (id. ¶ 12); and “Exhibit K is an email exchange [occurring November 14, 2011,] between Magnus Holmberg and outside counsel regarding the preparation of formal patent drawings for the invention” (id. ¶ 13). In our view, weighing the evidence as a whole over the entire critical period, it is apparent that Appellant did not abandon or unreasonably delay the invention, and, thus, the evidence sufficiently establishes reasonably continuous diligence throughout the critical period. See Perfect Surgical, 841 F.3d at 1009. Accordingly, we do not sustain the rejection of claims 1–14 and 17 under 35 U.S.C. § 102(e) as being anticipated by Signore. CONCLUSION The Examiner’s decision to reject claims 1–14 and 17 is reversed. In summary: Claims Rejected Basis Affirmed Reversed 1–14 and 17 § 102(e) 1–14 and 17 REVERSED Copy with citationCopy as parenthetical citation