Erland Falk. Hansen et al.

Patent Trials and Appeals Board

Sep 17, 2019

14360191 - (D) (P.T.A.B. Sep. 17, 2019)

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2 Claims 15 and 16 are withdrawn.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.
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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).
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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
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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).
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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
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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