Ex Parte ArelDownload PDFPatent Trial and Appeal BoardAug 28, 201312228342 (P.T.A.B. Aug. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID V. AREL ____________ Appeal 2011-008392 Application 12/228,342 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008392 Application 12/228,342 2 STATEMENT OF THE CASE David V. Arel (“Appellant”) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 1 and 12 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A wind turbine assembly comprising: a wind turbine tower; a sleeve member slidably coupled to the tower; a wind turbine attached to the sleeve member; a driving device for moving the sleeve member relative to the wind turbine tower; a guiding device for guiding the sleeve member longitudinally along an outer surface of the tower, the guiding device comprising: a linear guide member extending longitudinally along the outer surface of the tower; and a guide member slot in an inner diameter of the sleeve member wherein the guide member slot couples with and is slidable along the guide member in a linear path defined by the linear guide member. App. Br. 9 (Claims App’x, Claim 1). Appeal 2011-008392 Application 12/228,342 3 References The Examiner relies upon the following prior art references: Helm US 4,266,911 May 12, 1981 Potter US 4,342,539 Aug. 3, 1982 Baskin US 4,565,929 Jan. 21, 1986 Andruszkiw US 4,616,974 Oct. 14, 1986 Wood US 5,497,962 Mar. 12, 1996 Ruer US 2004/0169376 A1 Sept. 2, 2004 Rejections The Examiner makes the following rejections: I. Claims 1-3, 6, 10, and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Helm and Ruer; II. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Helm, Ruer, and Wood; III. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Helm, Ruer, and Potter; and IV. Claims 8, 9, and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Helm, Ruer, Baskin, and Andruszkiw. SUMMARY OF DECISION We AFFIRM. OPINION Rejection I – Obviousness over Helm and Ruer The Examiner concluded that the combination of Helm and Ruer would have rendered the subject matter of claims 1-3, 6, 10, and 11 obvious to one of ordinary skill in the art. Ans. 4-5. With respect to claim 1, the Examiner found that Helm discloses the elements of the claim except the use Appeal 2011-008392 Application 12/228,342 4 of a guiding device for guiding the sleeve member longitudinally along the tower. Id. at 4. The Examiner found that Ruer discloses linear guide members 30 extending longitudinally along the surface of tower 3a and guide member slots 17a on the raised or lowered telescoping tower 3b that are coupled with and slidable along the guide member 30. Id. The Examiner further found that Ruer’s arrangement prevents the two tower sections from rotating relative to one another. Id. (citing Ruer, para. [0079]). The Examiner determined that it would have been obvious to one of ordinary skill in the art at the time of invention “to modify the tower and sleeve assembly of Helm by utilizing a linear guiding device as taught by Ruer for the purpose of preventing the rotation of the sections relative to one another.” Id. at 4-5. Appellant raises several arguments in response to this rejection.1 We address each in turn. Appellant first asserts that “wind turbine 10 [of Helm] is not attached to sleeve member 15 as required by claim 1. Rather, the wind turbine 10 is attached to tower 12 directly and at its lower end us [sic] attached to a guide sleeve 28 which is non-rotatably joined to the tower 12.” Br. 5. We agree that element 15 of Helm is not attached to tower 12 directly. That finding, however, does not end the inquiry because while the Examiner initially relied upon element 15 as disclosing the claimed sleeve member (Ans. 4), the Examiner, in the response to Appellant’s argument, relied upon element 28 (shown in Figure 2 of Helm) and element 51 (shown in Figure 4 1 Appellant argues the claims subject to Rejection I as a group. See Br. 4-6. We select claim 1 as representative. Accordingly claims 2, 3, 6, 10, and 11 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011). Appeal 2011-008392 Application 12/228,342 5 of Helm) as disclosing the claimed sleeve member.2 Ans. 8. With this understanding, we are not persuaded by Appellant’s first argument because Helm’s wind turbine 10 is attached to element 28, as Appellant acknowledges. Br. 5 (“the wind turbine 10 . . . [is] attached to a guide sleeve 28”). Second, Appellant asserts that Helm’s sleeve member is not “slidably attached to the tower” because when the arresting means 34 is disengaged, sleeve 28 is also disengaged from tower 12 and ring 15 carries the weight of power house 10. Br. 5. Claim 1 calls for a sleeve member “slidably coupled” to the tower. Appellant has not contended that “coupled” means “directly attached” and we do not understand the Specification to convey such a narrow meaning. See, e.g., Spec. at para. [0016] (“In the preferred embodiment, a plurality of bushings or bearings are positioned between sleeve member 25 and wind turbine tower 14 to reduce the friction present in the slidable connection.”). As explained by the Examiner, during Helm’s raising or lowering process, element 28 is sandwiched between the ring 15 and the power house 10. 2 The Examiner confuses the terminology slightly by referring to a “guide sleeve element” where claim 1 recites a “sleeve member,” a “guiding device,” and “guide member,” but not a “guide sleeve” or “guide sleeve member.” See Ans. 8 (incorrectly indicating that Appellant asserted Helm fails to disclose “the claimed guide sleeve” and that Helm’s elements 28 and 51 disclose a “guide sleeve element”). We understand the Examiner’s use of “guide sleeve element” to refer to the claimed “sleeve member” because the Examiner found that Helm discloses this element of the claims whereas the Examiner relied upon Ruer as disclosing a “guiding device.” Ans. 4. Additionally, the Examiner referred to element 15 of Helm as the “ring (15),” not the sleeve member, in the Response to Argument section of the Answer. Compare Ans. 9 with Ans. 4. Appeal 2011-008392 Application 12/228,342 6 Ans. 9; see Helm, col. 3, l. 68 – col. 4, l. 5 (“In the lowering process, the guide sleeve 28 contacts the ring 15 connected to the guy wires 13, thereby connecting the ring 15 to the sleeve 28 and disengaging the arresting means 34.”). Thus, as the ring and power house slide up or down the tower, so too does guide sleeve 28. Accordingly, even though Helm’s arresting means 34 join guide sleeve 28 to the tower (see Helm, col. 3, ll. 67-68), its disengagement does not uncouple the sleeve 28 from the tower because the sleeve becomes sandwiched between the powerhouse and ring and thus via those elements remains slidably coupled to the tower. Third, Appellant asserts that Helm does not disclose a “guide member and . . . and slot engaging the guide member for linear vertical movement of the powerhouse.” Br. 5. Appellant also asserts that what moves along the tower in Helm is element 15, not sleeve 28.3 Id. As noted above, the Examiner relied upon Ruer as disclosing the guide member and slot engaging the guide member of claim 1, not Helm. See Ans. 4. Accordingly, Helm’s failure to disclose these elements is inapposite where a second reference discloses the missing elements. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references”); see also In re Merck & 3 Appellant also expresses some confusion with respect to a telephone interview with the Examiner. See Br. 5. In particular, Appellant expressed confusion in that the sleeve in Helm’s Figure 4 is not element 28. Id. The Examiner, however, explained the substance of the interview and correctly explains in the Answer that the sleeve in Figure 4 is element 51, although it was represented by element 28 in Figure 2. See Ans. 9 (explaining the substance of the interview); see also Helm, col. 4, ll. 24-25 (referring to “guide sleeve 51” in the context of Figure 4); fig. 4. Appeal 2011-008392 Application 12/228,342 7 Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (same); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.”). Additionally, as also indicated above, Helm’s guide sleeve 28 does move along the outer surface of the tower when sandwiched between the power house and ring 15. See Helm, col. 3, l. 68 – col. 4, l. 5. Further, Helm also discloses that the power house can be moved along the tower by making “the guide rollers 29 friction rollers and driving them electrically to move the guide sleeve 28 and the power house 10 with it up or down.” Id. at col. 4, ll. 6-9. Thus, Appellant’s assertion that guide sleeve 28 does not move along the tower is incorrect. Fourth, Appellant contends that because Ruer discloses a telescoping tower arrangement, guide members 30 and skids 17a and 17b are on the inside wall not the outside of the tower. Br. 5. Thus, Appellant asserts that Ruer does not disclose the elements missing from Helm. Id. at 6. Appellant also asserts that the Examiner did not provide any reasoning “for moving the inside slots of Ruer to the outside of Helm’s tower so that the sleeve 28, which is detached from the tower, can move linearly up and down. [And that t]here is no recognition of the problem solved by the present invention.” Id. In response to Appellant’s argument, the Examiner explained that guide members and guide slots are arranged in Ruer such that they are between the two surfaces that move relative to one another—one on the inner surface of outer tower 3a and one on the outer surface of the inner tower 3b. See Ans. 10; see also Ruer, figs. 5, 6. As applied to Ruer, the Appeal 2011-008392 Application 12/228,342 8 Examiner indicated that the guide members and slots would be positioned similarly, such that the guide members would be located along the outer surface of the tower and the slots located on the inner surface of the sleeve member. Ans. 10. We do not find Appellant’s arguments persuasive. The Examiner’s explanation for the relative placement of the guide member and slots in Ruer and as applied to Helm is both logical and rational. Further, as noted above, the Examiner provided a reason for moving the guide system of Ruer as applied to Helm—because one of ordinary skill in the art at the time of invention would employ such an arrangement between two surfaces intended to move relative to one another. See Ans. 10. And, the Examiner found that one of ordinary skill in the art would be prompted to modify Helm’s arrangement to prevent the rotation of sections relative to one another. See id. at 5; see also Ruer, para. [0079] (indicating that the use of U-shaped skids 17 (which the Examiner found to disclose the claimed slots) prevents rotation of the tower sections relative to one another). Thus, the Examiner’s articulated reasoning has a rational underpinning which supports the Examiner’s conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Additionally, the inquiry into whether an alleged invention would have been obvious to one of ordinary skill in the art at the time of invention is not limited only to the problem the patentee was trying to solve. See id. at 420 (“any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”); see also Ans. 11. That being said, the rationale provided by the Examiner is consistent with the problem to which Appeal 2011-008392 Application 12/228,342 9 Appellant’s guide device is directed. See Ans. 11; see also Spec. [0041] (“rotational movement of sleeve member 25 around outer surface 15 of wind turbine tower 14 is prevented by the interaction between guide member 96 and guide member slot 98”). Accordingly, we sustain Rejection I. Rejection II – Obviousness over Helm, Ruer, and Wood The Examiner concluded that the combination of Helm, Ruer, and Wood would have rendered the subject matter of claims 4 and 5 obvious to one of ordinary skill in the art at the time of invention. Ans. 5-6. The Examiner found that Helm as modified by Ruer discloses the elements of the claims except for the use of a geared lowering and raising means. Id. at 5. The Examiner found that Wood discloses a telescoping tower element including circular gears and motors that allows for the extension and retraction of the tower element. Id. at 6. The Examiner determined that because Wood and Helm disclose driving means for extending tower elements, it would have been obvious to one of ordinary skill in the art at the time of invention “to further modify the driving means of Helm by substituting a gear and track arrangement taught by Wood since the modification is simple substitution of one know[n] element for another having predictable results, i.e. the extension of the sleeve member relative to the tower.” Id. Appellant contends that “as noted above, Helm and Ruer do not have any articulated reason for moving the inside slots of Ruer to the outside of Helm’s tower . . . . [and] Wood does not remedy this lacking . . . .” Br. 6. Appellant also asserts that Wood is non-analogous art as it pertains to “a Appeal 2011-008392 Application 12/228,342 10 mooring tower for a lighter than air vehicle” and “[t]here is no concept [sic] raising and lowering apparatus of any kind.” Id. We addressed Appellant’s first argument in our discussion of Rejection I, supra, and did not find it persuasive based on the rationale provided by the Examiner. Further, we are not persuaded that Wood is non- analogous art. Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The “field of endeavor” test “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and function of the prior art would have been considered by a person of ordinary skill in the art because of similarity to the structure and function of the claimed invention as disclosed in the application, the prior art is properly considered within the same field of endeavor. See id. at 1325-26. At a minimum, Wood is reasonably pertinent to the particular problem with which the inventor is involved because both pertain to the problem of effecting relative displacement of one element along another. See Ans. 12. Particularly, both the invention and Wood pertain to raising and lowering one element relative to another. In the invention, the elements are the wind turbine and the tower, whereas in Wood, the elements are the telescoping Appeal 2011-008392 Application 12/228,342 11 members 66 and 68. See, e.g., Wood, col. 5, ll. 10-13 (“The second end 64 of the second support member 54 includes two telescoping members 66 and 68 that are extended and retracted by rack and pinion gear assemblies 70 and 72, respectively . . . .”); see also id. at figs. 6, 9. Thus, the Examiner properly considered Wood as analogous art. Accordingly, we sustain Rejection II. Rejection III – Obviousness over Helm, Ruer, and Potter The Examiner concluded that the combination of Helm, Ruer, and Potter would have rendered the subject matter of claim 7 obvious to one of ordinary skill in the art at the time of invention. Ans. 6-7. The Examiner found that Helm as modified by Ruer discloses the elements of the claims except for the use of a locking mechanism including a plurality of retractable pins. Id. at 6. The Examiner found that Potter discloses a plurality of retractable pins 44 to couple relatively slidable tower members 40, 61, 56 together both vertically and rotationally. Id. The Examiner determined that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the wind turbine of Helm by including the plurality of pins for the retention means as taught by Potter “so as to facilitate locking of the guide sleeve in a self-actuating manner.” Id. at 6-7. Appellant asserts that claim 6 calls for a locking mechanism, and that claim 7 specifies that the locking mechanism is a plurality of retractable pins. Br. 7. Appellant first contends that “[t]he pins 44 [of Potter] as cited by the Examiner are in fact latches, as noted on column 8, line 9, and not pins.” Id. Appellant then states, “Potter describes a pivoting pin that arcs into and out of engagement that is used with a jack screw to move the spars up and down. Movement by the jack screw is different in kind [than] the Appeal 2011-008392 Application 12/228,342 12 lateral movement of claim 1, and thus claim 7.” Id. Appellant further asserts that Potter is used to modify Helm and Ruer, which do not teach the invention, and thus “provides no motivation to make the change.” Id. Additionally, Appellant contends that there is “no articulated reason for this combination of references.” Id. We do not find Appellant’s arguments persuasive. First, although Appellant asserts that Potter does not disclose pins, Appellant later concedes that Potter describes a “pivoting pin.” See Br. 7. Second, we agree with the Examiner that Potter’s “pivoting pin” discloses a “retractable pin.” We construe claims by applying the broadest reasonable interpretation consistent with the specification, reading the claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. E.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 7 calls for a plurality of “retractable pins.” The usage of the term “retract” in the claim and Specification is consistent with its plain and ordinary meaning of “to draw something in or back.” See, e.g., CHAMBERS 21ST CENTURY DICTIONARY (2001), retrieved from http://www.credoreference.com/entry/chambdict/retract; see Spec., para. [0031] (“To lower wind turbine 12 from upper end 18 of wind turbine tower 14, locking mechanism 50 first retracts pin members 54 within tower 14. The retraction of pin members 54 is shown in FIG. 6 by arrows R. Once pin members 54 are retracted, driving device 24 may once again lower wind turbine 12.”). Thus, the plain and ordinary meaning of “retractable” is “able to be drawn in or back.” The Examiner explained that Potter’s pins “are ‘retracted’ when pivoted out of engagement with the groove (50) thereby unlocking the mast Appeal 2011-008392 Application 12/228,342 13 elements (40, 61, 56) from one another.” Ans. 12-13. In this manner, Potter’s pins are “able to be drawn in or back” away from latch holes 50. See Potter, col. 8, ll. 5-10 (describing the raising of the apparatus); id. at col. 13, ll. 11-13 (generally describing that the hoist means can provide lowering force); id. at fig. 3. Thus, the Examiner’s finding that Potter discloses retractable pins is supported by a preponderance of the evidence. Further, the Examiner found that Helm discloses “an ‘arresting means 34 joining the guide sleeve 28 to the tower’ in a non-rotatable manner,” but “is silent as to the specific structure of such an arresting mechanism.” Ans. 13 (citing Helm, col. 3, ll. 67-68, 57-58). Thus, the Examiner’s combination “provides Helm’s arresting means in the form [of] Potter’s retractable pins.” Id. And, the Examiner articulated a reason for the proposed combination with a rational underpinning— to facilitate locking of the guide sleeve in a self-actuating manner. See id. at 6-7. Accordingly, we sustain Rejection III. Rejection IV – Obviousness over Helm, Ruer, Baskin, and Andruszkiw The Examiner concluded that the combination of Helm, Ruer, Baskin, and Andruszkiw would have rendered the subject matter of claims 8, 9, and 12 obvious to one of ordinary skill in the art at the time of invention. Ans. 7-8. The Examiner found that Helm as modified by Ruer discloses the elements of the claims except for the use of a brake and a protective chamber. Id. at 7. The Examiner found that Baskin discloses a wind turbine including a brake assembly and Andruszkiw discloses a protective chamber. Id. The Examiner determined that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the wind turbine of Helm “by including a brake assembly as evidenced by Baskin so as to Appeal 2011-008392 Application 12/228,342 14 prevent rotation of the rotor for the purpose of allowing for maintenance and preventing damage in high winds.” Id. The Examiner also determined that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the turbine of Helm “by utilizing a protective chamber as taught by Andruszkiw for the purpose of preventing damage due to high winds.” Id. at 8. The Examiner further determined that it would have been obvious to one of ordinary skill in the art at the time of invention to position the blades horizontally because it reduces “the size of the protective chamber as well as the distance the tower must be lowered” as compared to positioning the blades vertically. Id. Appellant contends that “[t]here is no showing that Baskin can keep the blades in a horizontal position as the turbine is lowered to a protective chamber. Baskin can’t perform that function of claim 8.” Br. 7. Appellant also asserts that “the limitations of claim 9, of the use of a brake pad and a brake rotor operated by a piston, [are] not disclosed in Baskin. Baskin uses hydraulic pressure and a spring to engage and disengage its brake.” Id. Appellant further contends that “[t]he combination of these four references still does not provide any articulated reasoning for modifying the Helm reference as suggested by the Examiner.” Id. at 8. And, Appellant also states that “to combine these references changes the principle operation of the references.” Id. First, we agree with the Examiner’s determination that Baskin’s disclosure of a “rotor brake” is capable of stopping the rotor and rotationally fixing the position of the blades. Ans. 13; see Baskin, col. 6, ll. 43-46 (disclosing a rotor brake). We also agree with the Examiner that Baskin and Helm disclose rotors having two diametrically opposed blades and that Appeal 2011-008392 Application 12/228,342 15 stopping the rotor can result in the blades being in a “singular plane,” and hence in a horizontal position. See Ans. 13-14. Further, Appellant has not explained why Baskin’s rotor brake would not be capable of stopping the blades in such a position. Accordingly, we are not persuaded by Appellant’s argument that Baskin’s rotor brake is not capable of performing the claimed function. Second, we agree with the Examiner’s position that “[a] hydraulically actuated brake caliper [as disclosed in Baskin] is inherently one in which the hydraulic fluid acts on a piston to bring a brake pad into and/or out of contact with a brake rotor.” Id. at 14. Thus, Baskin’s disclosure of brake caliper 56, which is “disengaged by the application of hydraulic pressure” and “engaged by spring force when the hydraulic pressure is relieved,” discloses the use of a brake pad and brake rotor operated by a piston. See, e.g., Baskin, col. 6, ll. 40-62, fig. 5. Additionally, as noted above, the Examiner articulated reasons with rational underpinnings for the combinations proposed in this rejection, and Appellant has not explained beyond the cursory statement quoted above why the Examiner’s rationale is deficient. Further, Appellant’s contention that the combination of these references “changes the principle operation of the references” is entirely deficient of any explanation as to what the principle operation of the references was prior to the combination and how their combination, as proposed by the Examiner, changes their principal of operation. As such, we are not persuaded by Appellant’s assertion. Accordingly, we sustain Rejection IV. Appeal 2011-008392 Application 12/228,342 16 DECISION We AFFIRM the Examiner’s decision rejecting claims 1-12. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation