Simon Schj¿tt et al.

Patent Trials and Appeals Board

Oct 28, 2020

14419146 - (D) (P.T.A.B. Oct. 28, 2020)

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.
14/419,146 06/01/2015 Simon Schjøtt VWS-675US 5040
83583 7590 10/28/2020
Wood, Herron & Evans, LLP (Vestas Wind Systems)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
10/28/2020 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 SIMON SCHJØTT, THOMAS KORSGAARD NIELSEN, JAN
HOVE PEDERSEN, SASCHA GUTT, and DANIEL HENRIKSEN
__________

Appeal 2020-001932
Application 14/419,146
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 11, 13, 15–20, 22, 23, and 25–27,
which constitute all the claims pending in this application. Final Act. 1
(Office Action Summary); Appeal Br. 1. Claims 10, 12, 14, 21, and 24 have
been canceled. Appeal Br. 27–30 (Claims App.). We have jurisdiction

1 We use the word “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.
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under 35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM the
Examiner’s rejections.

CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to lubrication systems and
methods where consumers are monitored via their lubricant.” Spec. ¶ 1.
Method claims 1, 9, and 22 and system claim 13 are independent. See
Appeal Br. 2. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A method of lubricating different consumers whose
lubricant is to be analyzed, comprising:
directing lubricant to the different consumers;
draining the lubricant through drain lines connected to the
consumers, the drain lines being connected to a tank so as to
direct the lubricant to the tank;
extracting at least some lubricant from the drain lines or
the consumers into extraction lines;
selectively directing flow from the extraction lines to a
measurement device;
measuring a characteristic of the lubricant directed to the
measurement device prior to the lubricant being received in the
tank; and
drawing lubricant from the extraction lines to the
measurement device with a pump positioned upstream of the
measurement device,
wherein the consumers are components of a wind turbine
power transmission system.

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REFERENCES RELIED ON BY THE EXAMINER
Tortora US 5,610,341 Mar. 11, 1997
Care et al. US 7,163,086 B2 Jan. 16, 2007
Shevchencko et al. US 7,886,875 B2 Feb. 15, 2011
Johnson et al. US 8,869,940 B2 Oct. 28, 2014
Kumpulainen WO 00/32980 A1 June 8, 2000

THE REJECTIONS ON APPEAL2, 3
Claims 1, 2, 4–8, 11, 22, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kumpulainen, Tortora, and Johnson. Final Act. 3, 9.
Claims 3, 9, 25, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kumpulainen, Tortora, Johnson, and Shevchencko. Final
Act. 6.
Claims 13, 15, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kumpulainen and Johnson. Final Act. 10.
Claims 16, 19, 20, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kumpulainen, Johnson, and Shevchencko. Final Act. 11–
12.

2 In the Final Office Action, the drawings are objected to under 37 CFR
1.83(a). See Final Act. 2. However, the objection is not within the
jurisdiction of the Board. See 37 C.F.R. § 1.181.
3 Because claim 24 has been canceled (see Appeal Br. 2), the following
rejections are now moot and are not included: (a) the rejection of claim 24
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (see Final Act. 3); and (b) the rejection of claim 24
under 35 U.S.C. § 103(a) as unpatentable over Kumpulainen, Johnson,
Shevchencko, and Care (see Final Act. 13).
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ANALYSIS
The rejection of claims 1, 2, 4–8, 11, 22, and 23
as unpatentable over Kumpulainen, Tortora, and Johnson
Claims 1 and 22:
“Appellant addresses the rejection of independent claims 1 and 22
together except where otherwise noted.” Appeal Br. 8. Appellant, however,
does not provide any other arguments directed to claims 1 or 22. See Appeal
Br. 8–17. Accordingly, we select claim 1 for review, with claim 22 standing
or falling with claim 1. See also 37 C.F.R. § 41.37(c)(1)(iv)(2019).
Independent claim 1 recites a “method of lubricating different
consumers whose lubricant is to be analyzed, comprising” various steps
including directing, draining, extracting, and measuring a characteristic of,
the lubricant to or from the different consumers. Appeal Br. 24 (Claims
App.). Claim 1 further recites, “wherein the consumers are components of a
wind turbine power transmission system.” Appeal Br. 24 (Claims App.).
Appellant contends that “Kumpulainen is not analogous art and is
therefore not available for an obviousness rejection.” Appeal Br. 9.
Appellant argues that “Kumpulainen is not from the same field of endeavor
as the claimed invention” because “[t]he present invention is directed to
lubrication systems and methods for wind turbines,” whereas “Kumpulainen,
on the other hand, is expressly directed to oil circulating lubrication systems
in paper and cardboard machines.” Appeal Br. 9 (citing Spec. ¶ 1;
Kumpulainen 1:7–11).
Appellant’s argument is unpersuasive. Appellant’s Specification
discloses that “[t]he present invention relates to lubrication systems and
methods where consumers are monitored via their lubricant.” Spec. ¶ 1; see
also id. at ¶ 3 (“[i]t is advantageous to monitor the condition of lubricant in a
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lubrication system.”) (emphasis added). The preamble to claim 1 further
recites “[a] method of lubricating different consumers whose lubricant is to
be analyzed.” Appeal Br. 24 (Claims App.) (emphasis added). However, as
noted above, claim 1 further recites, “wherein the consumers are
components of a wind turbine power transmission system.” Appeal Br. 24
(Claims App.); see also Spec ¶ 1 (“The systems and methods are especially
relevant to wind turbines.”) (emphasis added). Thus, although Appellant
recites special relevance to wind turbines, we determine that the field of
endeavor of the claimed subject matter is not restricted solely to wind
turbines, but also encompasses lubrication systems or consumers of
lubricant.
Kumpulainen discloses that “[t]he invention has been developed and
intended especially for oil circulating lubrication systems in paper and
cardboard machines,” but Kumpulainen also discloses that “it can be used in
the same way in other lubrication systems and equivalent.” Kumpulainen
1:7–11; emphasis added. Thus, Kumpulainen’s field of endeavor also
encompasses lubrication systems or consumers of lubricant and is not
restricted solely to use with paper and cardboard machines. As such,
Appellant does not explain how Kumpulainen fails to likewise pertain to the
field of lubrication systems or consumers of lubricant, and particularly, the
lubricant of machinery exposed to harsh environments. Consequently,
Appellant’s contention that Kumpulainen does not specifically relate to the
lubrication of wind turbines is not persuasive that Kumpulainen fails to be in
the same field of endeavor. See also Ans. 3.
We are also not persuaded by Appellant’s contention that
“Kumpulainen is not reasonably pertinent to the problem faced by the
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inventors.” Appeal Br. 9. Appellant argues that “the various problems
sought to be overcome by the claimed invention include the increased cost
and complexity of wind turbine lubrication systems caused by the placing of
particle counters in the drain lines of each component whose condition is
being monitored via lubricant.” Appeal Br. 9–10. According to Appellant,
“Kumpulainen is completely unrelated to such problems” because
“Kumpulainen is focused on minimizing the amount of water and air
entering into the oil circulating lubrication system of paper and cardboard
machines via bearing seals.” Appeal Br. 10 (citing Spec. ¶ 4; Kumpulainen
1:12–2:10, 3:34–4:3). The Examiner correctly responds that
[Kumpulainen] is pertinent to the particular problem with
which Appellant was concerned since both the instant invention
and the prior art are concerned with lubricating sensitive
components of a machine. Even further, both are concerned with
monitoring the lubrication system to accurately locate which
component is undergoing substantial wear by measuring the
amount of particle[s] in the return flow. . . . . The last paragraph
on page 1 states [that] a goal [is] to “monitor and examine the
wear of lubricated parts and the aging of the lubricant as
effectively and minutely as possible.” Page 3[,] lines 29–32 and
page 6[,] lines 19–28 disclose the effectiveness of selectively
monitoring different flow paths.
It is not clear how Appellant’s concern for “increased cost
and complexity” of using multiple particle counters in the drain
lines would preclude Kumpulainen’s lubrication system.
Kumpulainen discloses the claimed extraction lines and
selectively directing flow from the extraction lines to a single
measurement device. While Kumpulainen analyzes the water
content in the oil, the prior art is also concerned with measuring
the size and quality of the particles in the oil, see page 2[,] lines
16–20.
Ans. 3–4; emphases added. In other words, we agree with the Examiner that
Kumpulainen is reasonably pertinent to the particular problem with which
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the inventor is involved, namely, lubricating sensitive components of a
machine and/or monitoring the lubrication system to accurately locate which
component is undergoing substantial wear. Thus, even under this reasonably
pertinent prong of the analogous art test, Kumpulainen would rationally be
considered analogous art. See In re Clay, 966 F.2d 656, 658 (Fed. Cir.
1992). Appellant does not apprise us of Examiner error on this point.4
Appellant next contends that “the proposed modification would render
Kumpulainen unsatisfactory for its intended purpose.” Appeal Br. 11.
Appellant argues that “the Examiner’s proposed introduction of Tortora’s
pump to actively force lubricant to Kumpulainen’s measuring unit (9) would
have the severe consequence of interfering with Kumpulainen’s deaerator
(8)” because: (a) “Kumpulainen is focused on minimizing the amount of air
and water in the system” (Appeal Br. 12); (b)
[h]ypothetically locating a pump upstream of Kumpulainen’s
deaerator (8) (i.e., such that the deaerator (8) is on the pressure
side of the pump) would impair the performance of the
deaerator (8) because the presence of such a pump upstream of
the deaerator (8) would impose a positive pressure . . . at the
deaerator (8)
(id. at 12–13; emphasis added); and (c) “[h]ypothetically locating a pump
downstream of Kumpulainen’s deaerator (8) would result in the deaerator
(8) hindering the pump from actually drawing liquid from the return pipes
(16) due to the lower pressure gas volume of the deaerator (8)” (id. at 13;
emphasis added). Appellant also argues that the proposed modification

4 As Appellant has not filed a Reply Brief, Appellant has waived any
arguments against the Examiner’s findings. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (“Informative”) (“[A]rguments that could
be made in the reply brief, but are not, are waived.”).
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“could compromise the absence of air in the piping” of Kumpulainen and “is
completely unnecessary in view of the gravitation-based oil flow return
expressly disclosed by Kumpulainen.” Appeal Br. 13–14.
Regarding the points raised above, the Examiner responds that
Appellant’s recitation of Kumpulainen “flow returns by
gravitation” would apply to only the drain line, not the extraction
lines as required by the claim. Kumpulainen [at] page 2[,] lines
29–37 describes a desire[] to apply “negative pressure” in the
extraction line to suck the oil. Negative pressure would be
derived from using a pump, for example. []
Employing a pump, at lubrication line 19 for example,
would extract oil quicker and more reliably into the extraction
line branching off from the drain line. Appellant’s different
scenarios with different pump locations and hypothetical issues
are simply just that - hypothetical. Teaching a pump to extract
oil can still be successful where the deaerator would still properly
perform its function.
Adding a pump would not take away from Kumpulainen’s
advantage of a system with no air flow in the piping. Since no
air is being introduced, the pump would only pump oil as
opposed to pumping a mixture of air and oil.
Ans. 4; emphases added. As the Examiner points out, some of Appellant’s
arguments are that the proposed modification would hypothetically create
problems with Kumpulainen’s deaerator. See above. However, Appellant
does not provide evidence or sufficient technical reasoning that the proposed
modification would actually render Kumpulainen unsatisfactory for its
intended purpose. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Further, we note that Tortora discloses that scavenge pump 32 is
positioned between chip detector 64 (i.e., a measurement device) and the
extraction lines in the same manner as claimed, i.e., “with a pump positioned
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between the extraction lines and the measurement device.” See Tortora
3:23–27 (disclosing “[u]pon leaving the bearings 22, the spent oil is
collected in the corresponding sumps 30 and then pumped by one or more
scavenge pumps 32 through the conduits;” italics added); Fig. 3. Moreover,
to the extent that Appellant is arguing the pump of Tortora cannot be added
to the system of Kumpulainen because of Tortora’s deaerator, the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). See also Ans. 5. To be clear, Kumpulainen teaches use of
pump 15 in the system, but Figure 1 thereof locates pump 15 downstream
the measuring unit, not upstream as recited (and as disclosed in Figure 3 of
Tortora).
Appellant also argues that a skilled artisan would have no reason to
modify Kumpulainen’s system for use with components of a wind turbine
power transmission system because “Kumpulainen is directed to an oil
circulating lubrication system in paper and cardboard machines” and also
“[i]n view of the relatively immense dimensions of power transmission
drives in wind turbines.” Appeal Br. 15. Thereafter, Appellant argues that
the Examiner relies on impermissible hindsight reasoning. Appeal Br. 16.
These arguments are similar to Appellant’s earlier arguments
pertaining to non-analogous art, just stated a different way. As discussed
above, we do not find Appellant’s arguments persuasive because the
Examiner reasons that it would have been obvious to modify the system of
Kumpulainen to add the pump of Tortora “to actively force lubricant to the
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measuring device” and “ensure[] a quicker lubricant delivery and sufficient
lubricant amount is received by the measurement device.” Final Act. 5–6.
Further, the Examiner references Johnson (which addresses lubricating the
components of a wind turbine) stating that such lubrication would “extend
the life of rotating components in a wind turbine.” Final Act. 6. The
Examiner explains that such a “lubricating circuit would reduce maintenance
interval.” Final Act. 6. Accordingly, the Examiner’s rejection is based on
sound technical reasoning and evidence as disclosed in the cited prior art,
rather than a reliance on improper hindsight reconstruction as alleged by
Appellant.
For these reasons, we sustain the Examiner’s rejection of claim 1 as
obvious over Kumpulainen, Tortora, and Johnson.
Claims 2, 4–8, 11, 22, and 23:
Appellant contends that “[c]laims 2, 5–8, and 11 each depend from
claim 1 and are allowable for at least the same reasons” and “[c]laim 23
depends from claim 13 and is allowable for at least the same reasons set
forth below.” Appeal Br. 17. As explained in the section below regarding
independent claim 13, Appellant relies on the same arguments previously
presented with respect to independent claim 1. Appeal Br. 21–22.
Appellant also contends that “[c]laim 4 depends from claim 1 and is
allowable for at least the same reasons.” Appeal Br. 21. As we find no
deficiencies in the Examiner’s rejection of independent claim 1 as being
obvious over Kumpulainen, Tortora, and Johnson for the reasons discussed
above, we likewise sustain the Examiner’s rejections of claims 2, 4–8, 11,
22, and 23.

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The rejection of claims 3, 9, 25, and 27
as unpatentable over Kumpulainen, Tortora, Johnson, and Shevchencko
The rejection of claims 13, 15, 17, and 18
as unpatentable over Kumpulainen and Johnson
The rejection of claims 16, 19, 20, and 26
as unpatentable over Kumpulainen, Johnson, and Shevchencko
Claims 3, 9, 13, and 15–20:
Regarding dependent claims 3 and 15–20 and independent claims 9
and 13, Appellant relies on the same arguments presented above regarding
independent claim 1. See Appeal Br. 17–19, 21–22. Consequently, we
likewise sustain the Examiner’s rejections of claims 3, 9, 13, and 15–20 over
the various combinations of cited art.
Claims 25–27:
Claims 25–27 each depend from different independent claims and
further, each dependent claim recites “wherein the measurement device
includes [a/the] particle collector.” Appeal Br. 30–31 (Claims App.).
Appellant’s arguments for these three claims mirror each other. See Appeal
Br. 19–20, 22. We select claim 25 for review. See also 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).
The Examiner finds that Shevchencko discloses a particle collector
(filter 412). See Final Act. 8 (citing Shevchencko Fig. 4). Appellant argues
that “Shevchencko clearly discloses that the oil debris monitor (410), cited
by the Examiner for the recited measurement device, is separate and distinct
from the oil filter (412)” and “[t]hus, Shevchencko’s alleged measurement
device (oil debris monitor (410)) does not include a particle collector as
recited in claim 25.” Appeal Br. 19–20.
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The Examiner responds that “claim 25 recites ‘the measurement
device includes a particle collector[]’ (emphasis added).” Ans. 7. The
Examiner further states that “[t]he rejection does not refer to the
‘measurement device’ as being only element 410” and “[a]s such, the
measurement device includes both elements 410 and 412.” Ans. 7.
The Examiner has the better position. First, the Examiner already
finds that Kumpulainen discloses a measurement device (measuring unit 9).
Final Act. 4, 6, 10 (citing Kumpulainen Fig. 1). Further, claim 25 does not
preclude the particle collector from being separate and distinct from the
measurement device. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). Claim 25 recites the term
“including” which equates to the term “comprising.” See In re Skvorecz,
580 F.3d 1262, 1267–68 (Fed. Cir. 2009) (“‘comprising’ is well understood
to mean ‘including but not limited to.’” (citation omitted)); In re Crish, 393
F.3d 1253, 1257 (Fed. Cir. 2004) (“comprising” means the named elements
are essential but other elements may be added and still form a construct
within the scope of the claim) (citation omitted)). Thus, use of the term
“comprising” or the term “including,” means that a device may contain
elements in addition to those explicitly recited and still fall within the scope
of claim 25.
For these reasons, the rejections of claims 25–27 are sustained.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–8, 11,
22, 23
103(a) Kumpulainen,
Tortora, Johnson
1, 2, 4–8,
11, 22, 23

3, 9, 25, 27 103(a) Kumpulainen,
Tortora, Johnson,
Shevchencko
3, 9, 25, 27
13, 15, 17, 18 103(a) Kumpulainen,
Johnson
13, 15, 17,
18

16, 19, 20, 26 103(a) Kumpulainen,
Johnson,
Shevchencko
16, 19, 20,
26

Overall
Outcome
1–9, 11, 13,
15–20, 22,
23, 25–27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED