Ex Parte Østergaard Kristensen et al

Patent Trial and Appeal Board

Jun 26, 2017

13273336 (P.T.A.B. Jun. 26, 2017)

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.
13/273,336 10/14/2011 Jens J0rgen 0stergaard Kristensen 2010P21482US 4841
22116 7590 06/28/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
BROWN, ADAM WAYNE
Orlando, EL 32817 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS J0RGEN OSTERGAARD KRISTENSEN and
CARSTEN THRUE
Appeal 2016-003504
Application 13/273,336
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jens Jorgen Ostergaard Kristensen and Carsten Thrue (Appellants)1
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
17—21 and 24—36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. Appeal Br. 3.
Appeal 2016-003504
Application 13/273,336
THE CLAIMED SUBJECT MATTER
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A blade of a wind turbine, comprising:
a vortex-generator, which is positioned at a blade-surface,
comprising:
a platform, and
an extension-part; and
a fixed recess, which is constructed and arranged to
receive at least a part of the platform of the vortex-generator,
wherein the platform is fixed within the recess, and
wherein the vortex-generator is constructed and arranged
in a way that it contributes to aerodynamic characteristics of the
blade.
REJECTIONS
I. Claims 17—19, 24—26, and 30-34 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Lisy (US 6,105,904,
iss. Aug. 22, 2000) and Haag (US 2009/0087314 Al, pub. Apr.
2, 2009).
II. Claims 20, 21, and 36 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lisy, Haag, and Arinaga
(US 2009/0053062 Al, pub. Feb. 26, 2009).
III. Claim 35 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lisy, Haag, Schmidt (US 4,536,674, iss.
Aug. 20, 1985), and Arinaga.
IV. Claims 17 and 27—29 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Anderson (US 2,764,373, iss. Sept. 25,
1956) and Haag.
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DISCUSSION
Rejection I
Appellants argue for patentability of independent claims 17 and 34
together as a group. Appeal Br. 7—10; Reply Br. 4—6. Appellants do not
assert any separate arguments for patentability of dependent claims 18, 19,
24—26, and 30-33 apart from their dependence, directly or indirectly, from
claim 17. Appeal Br. 11; Reply Br. 6. We select claim 17 as representative,
with claims 18, 19, 24—26, and 30-34 standing or falling therewith.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Lisy discloses, in relevant part,
a vortex-generator (flow effector 20, col. 4, lines 39-41), which
is positioned at a blade-surface (Fig. 1), comprising a platform
(flow surface face 32), and an extension-part (the fin portion of
flow effector 20); and a recess (in which housing 12 is situated,
Fig. 1), which is constructed and arranged to receive at least a
part of the platform of the vortex-generator (Fig. 1), wherein the
platform is fixed within the recess (Fig. 1).
Final Act. 4. The Examiner clarifies in the Answer that “the fixed recess of
Lisy is the channel shown in Fig. 1 in which housing 12 is seated” (Ans. 11),
elements “22a and 22b of Lisy correspond to the ‘extension-part,’” and “it is
flow surface face 32 that corresponds to the claimed platform” {id. at 12).
Thus, as clarified in the Answer, the Examiner reads the claimed “vortex-
generator” on structure in Lisy including at least flow effector 20 and flow
surface face 32 of housing 12, with elements 22a and 22b of flow effector 20
corresponding to the “extension-part” of the claimed “vortex-generator” and
flow surface 32 corresponding to the “platform” of the claimed “vortex-
generator.”
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Appellants argue that Lisy does not disclose “a fixed recess, which is
constructed and arranged to receive at least a part of the platform of the
vortex-generator, wherein the platform is fixed within the recess.” See
Appeal Br. 8. In particular, Appellants assert that Lisy “discloses movably
attaching a flow effector 20 to a flow surface 10 of a housing 12,” and
“housing 12 is not situated in a fixed recess, but instead, a flexible element
60.” Id. (citing Lisy, col. 4,11. 32-46, 58—68). According to Appellants,
“[bjecause this flexible element 60 is continuously changing, by design, the
flexible element cannot be the same as the defined recess recited in the
claims.” Id. at 9. Appellants also argue that “any attempt to modify the
[flexible] element [60], i.e., making it defined or fixed, would effectively
change the intended purpose of the flexible element, by rend[er]ing it
inflexible and consequently inoperable for its intended purpose.” Id.', see
also id. (asserting that “there can be no motivation to combine the references
as suggested by the Examiner, as the proposed modification would change
the operation of the flexible element”).
Appellants’ arguments are not persuasive of error because they are not
responsive to the rejection articulated by the Examiner. Namely, the
Examiner does not rely on Lisy’s flexible element 60 (which forms part of
the deploying and retracting means which movably attaches flow effector 20
to housing 12,2 and not housing 12 to the recess) to address the “fixed
recess” recited in claim 17. Rather, as discussed above, the Examiner relies
on the channel in which housing 12 is seated. See Ans. 11 (citing Lisy, Fig.
1); see also id. (explaining that “housing 12 is located in a hollow space
within the body depicted in Fig. 1 (described at col. 4, lines 20—22 as, e.g. an
2 See, e.g., Lisy, col. 4,11. 33—36, 62—63, col. 5,11. 6—8.
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Application 13/273,336
aircraft wing)”); Lisy, col. 4,11. 60-66. The Examiner states that “because
the recess is formed in the body of a structure, there is no mechanism by
which the recess can be moved, i.e. it is fixed” {id.), and Appellants do not
persuasively refute this statement. Moreover, the modification proposed by
the Examiner in the rejection is not based upon any modification of flexible
element 60. Instead, the Examiner acknowledges that Lisy does not disclose
using a vortex generator on a wind turbine blade, and relies on Haag for
teaching this feature. See Final Act. 4. The Examiner determines that it
would have been obvious to use Lisy’s vortex generator system on a wind
turbine blade “for the purpose of controlling the aerodynamic properties of
the blade.” Id. at 4—5; see id. at 4 (finding that “Lisy teaches the use of
vortex generators as a means to control the aerodynamic properties of an
airfoil (col. 4, lines 27—32)”). In this regard, Appellants do not specifically
address the combination of reference teachings proposed in the rejection or
explain why the Examiner’s reasoning for such a combination may be in
error.
Appellants argue that Figure 4 of Lisy “teaches away from a fixed
recess.” Appeal Br. 9. This argument is not convincing. A reference
teaches away from a claimed invention or a proposed modification if “a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed
subject matter merely by disclosing a different solution to a similar problem
unless the prior art also criticizes, discredits, or otherwise discourages the
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solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Appellants do not point to, nor do we find, any disclosure in Lisy
criticizing, discrediting, or otherwise discouraging a fixed recess. To the
contrary, as discussed above, the Examiner finds that Lisy discloses such a
feature, and Appellants do not identify error in the Examiner’s finding.
Furthermore, Appellants’ reliance on Figure 4 of Lisy is unavailing because
this figure simply shows “a particular design of a flow effector 20” (Lisv,
col. 5,1. 62) and does not constitute a teaching away from a fixed recess.
Appellants argue that Lisy fails to disclose a vortex-generator
platform fixed in a fixed recess. See Appeal Br. 9-10. In particular
Appellants assert that “none of the vortex generators (22 a and 22b) are fixed
within a fixed recess, nor are the ‘platforms’ or blocks (24a and 24b) which
they sit upon arranged as recited in the claims.” Id. at 10. This argument is
not persuasive of error because it does not address the particular findings
made by the Examiner in the rejection. As discussed above, the Examiner
finds, in pertinent part, that Lisy’s flow surface face 32 (of housing 12), and
not blocks 24a and 24b, corresponds to the claimed “platform,” and elements
22a and 22b correspond to the claimed “extension-part.” See Final Act. 4;
Ans. 12. Appellants do not identify error in these findings, which are
supported by a preponderance of the evidence.
Appellants argue that Lisy “discloses moveably attaching a flow
effector 20 to a flow surface 10 of a housing 12.” Reply Br. 5 (citing Lisy,
col. 4,11. 32^46). Appellants assert that housing 12 “is not a housing of the
flow effector 20, but instead a housing 12 that the flow effector is movably
attached to.” Id. (citing Lisy, col. 4,11. 39-41). According to Appellants,
“something that is moveable cannot be fixed” {id. (emphasis omitted)), and,
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as such, Lisy “clearly teaches away from the claimed arrangement which
requires that the platform be fixed” (Appeal Br. 10 (boldface omitted)). We
are not persuaded by Appellants’ argument.
To the extent that Appellants appear to argue that Lisy fails to disclose
a vortex-generator platform and extension-part that are “fixed” relative to
each other, such an argument is not commensurate with the scope of claim
17. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
claim 17 recites, in relevant part, “a vortex-generator, which is positioned at
a blade-surface, comprising: a platform, and an extension-part.. . wherein
the platform is fixed within the recess.” Appeal Br. 14 (Claims App.).
However, the claim does not recite a “fixed” relationship between the
platform and extension-part, nor does the claim recite any limitations
excluding a platform and an extension-part that are movable with respect to
each other. Instead, the claim only requires that the platform is fixed within
the fixed recess. See id.
Lisy discloses that housing 12 includes base plate 30 and flow surface
32 having apertures 36, through which elements 22a and 22b of flow
effectors 20 extend. See Lisy, col. 6,11. 9-11, 13—17; col. 7,11. 16—18; Fig.
5. Lisy discloses that “flow surface [32] attachment holes 31 enable the
housing 12 to be retrofitably attachable to the flow surface 10 by bolting the
housing 12 to the flow surface 10.” Id., col. 6,11. 44^47. Lisy further
discloses that housing 12 can be installed in a wing such that flow surface
face 32 is flush with flow surface 10. See id., 11. 49-51. Given that Lisy
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also discloses flow surface face 32 of housing 12 bolted (i.e., fixed) to a
wing such that flow surface face 32 (i.e., platform) is flush with the wing
surface 10 (i.e., recessed), the Examiner’s finding that Lisy discloses a
vortex-generator platform that is fixed in a fixed recess is supported by a
preponderance of the evidence. In other words, Appellants do not persuade
us of error in the Examiner’s finding that the claimed “platform” and
“extension-part” read on Lisy’s flow surface face 32 and flow effector
elements 22a and 22b, respectively. Moreover, the fact that Lisy discloses
flow effectors 20 being movable relative to flow surface face 32 does not
discredit or discourage fixing a platform in a fixed recess, and, thus,
Appellants’ argument that Lisy teaches away from such an arrangement is
unpersuasive. See In re Fulton, 391 F.3d at 1201.
Appellants also argue that “flow effectors 20 cannot be fixed because
they must remain movable in order for Lisy’s invention to be operable for its
intended purpose.” Reply Br. 5 (italics omitted) (citing Lisy, Abstract).
According to Appellants, “fixing the flow effectors 20 as prescribed by the
Examiner is impermissible as it changes the operation of the flow effectors
20.” Id. at 5—6 (emphasis added). This argument is unpersuasive because
the Examiner’s rejection is not based upon any modification of Lisy’s flow
effectors 20 or their attachment to housing 12. Rather, as discussed above,
the only modification of Lisy proposed by the Examiner involves applying
Lisy’s vortex-generator system to a wind turbine blade, based on the
teachings of Haag. See Final Act. 4—5. Appellants’ argument does not
specifically address or identify error in the actual combination of teachings
from Lisy and Haag proposed by the Examiner in the rejection.
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For the above reasons, Appellants do not apprise us of error in the
Examiner’s determination that the subject matter of claim 17 would have
been obvious. Accordingly, we sustain the rejection of claim 17, and of
claims 18, 19, 24—26, and 30-34 falling therewith, under 35 U.S.C. § 103(a)
as unpatentable over Lisy and Haag.
Rejections II and III
In contesting the rejections of claims 20, 21, 35, and 36, Appellants
rely on the arguments asserted against Rejection I, and contend that Arinaga
and Schmidt do not make up for the asserted deficiencies in the combination
of Lisy and Haag. Appeal Br. 11—12. For the reasons discussed above,
these arguments fail to apprise us of error in Rejection I, and, thus, likewise,
fail to apprise us of error in Rejections II and III. Accordingly, we sustain
the rejections of claims 20, 21, 35, and 36 under 35 U.S.C. § 103(a).
Rejection IV
The Examiner finds that Anderson discloses, in relevant part,
a vortex-generator (including vane 12 and stud 14), which is
positioned at a flow surface (Fig. 1), comprising a platform (stud
head 14a), and an extension-part (vane 12); and a recess (hole
23), which is constructed and arranged to receive at least a part
of the platform of the vortex-generator (Fig[sj. 3—4), wherein the
platform is fixed within the recess (Fig[sj. 2—3).
Final Act. 10. The Examiner clarifies in the Answer that “Anderson teaches
an extension-part (vane 12) and a platform (stud head 14a) which is received
in a fixed recess (hole 23).” Ans. 14 (citing Anderson, Figs. 1^4; col. 3,11.
27-32).
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Appellants argue that “Anderson does not teach or suggest a fixed
recess, which is constructed and arranged to receive at least a part of the
platform of the vortex-generator . . . wherein the platform is fixed within the
fixed recess.” Appeal Br. 12. In particular, Appellants assert that “the vane
12 and the flat head 14a are two distinct features of Anderson, and not the
same as the fixed recess.” Id. This argument is not persuasive of error
because it is not responsive to the rejection as articulated by the Examiner.
Namely, the Examiner does not rely on vane 12 or flat head 14a as the
“recess” recited in claim 17. Instead, as discussed above, the Examiner
relies on hole 23. See Final Act. 10.
Appellants argue that “Anderson teaches that it is the stud shank 14e
that is fit into the hole 23, and not the vane 12 or the flat head 14a.” Appeal
Br. 12 (citing Anderson, col. 3,11. 25—35); see Reply Br. 7 (asserting that
“Anderson does not disclose any part of the vane 12 being secured in the
stud hole 23” (italics and emphasis omitted)). According to Appellants,
“Anderson requires that ‘the vane 12 be flush’ with the surface.” Appeal Br.
12 (italics omitted) (citing Anderson, col. 3,11. 27—34). Appellants’
argument is not convincing. As discussed above, the Examiner finds that
vane 12 corresponds to the claimed “extension-part” and stud head 14a
corresponds to the “platform” that is “fixed within the recess” (i.e., counter-
bored hole 23). See Final Act. 10; Ans. 14. In this regard, Anderson
discloses that “hole [23] is counter-bored to receive the stud head 14a so that
the end face thereof [stud head 14a] carrying the vane 12 will be flush with
the surface of the airfoil (Figure 3).” Anderson, col. 3,11. 29—32. Anderson
also discloses that “vane 12 is formed of sheet metal and is soldered, brazed
or otherwise secured to the flat head 14a.” Id., col. 2,11. 63—65. In other
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words, Anderson does not disclose that vane 12 is flush with the wing, but,
rather, as the Examiner explains, “it is stud head 14a which is flush with the
flow surface, and vane 12, being attached to stud head 14a, projects above
the surface.” Ans. 14; see also Anderson, Fig. 3 (depicting stud head 14a in
the counter-bore of hole 23 and flush with wing skin S). Appellants’
arguments do not identify a deficiency in the Examiner’s finding as to the
disclosure of Anderson, which is supported by a preponderance of the
evidence.
For the above reasons, Appellants fail to apprise us of error in the
Examiner’s conclusion that the subject matter of claim 17 would have been
obvious. Accordingly, we sustain Rejection IV of claim 17, as well as
claims 27—29, for which Appellants do not present any separate arguments
for patentability (see Appeal Br. 13; Reply Br. 6—7) and which, thus, fall
with claim 17, under 35 U.S.C. § 103(a) as unpatentable over Anderson and
Haag.
DECISION
The Examiner’s decision rejecting claims 17—21 and 24—36 is
affirmed.
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)(l)(iv).
AFFIRMED
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