Earley, Matthew

Patent Trials and Appeals Board

Mar 11, 2020

12925235 - (R) (P.T.A.B. Mar. 11, 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.
12/925,235 10/18/2010 Matthew Earley 2522
7590 03/11/2020
Matthew Earley
3226 Atlantic Ave
PO Box 213
Allenwood, NJ 08720
EXAMINER
CUEVAS, PEDRO J
ART UNIT PAPER NUMBER
2831
MAIL DATE DELIVERY MODE
03/11/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW EARLEY

Appeal 2019-000815
Application 12/925,235
Technology Center 2800
____________

Before ROMULO H. DELMENDO, RAE LYNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

SECOND DECISION ON REQUEST FOR REHEARING
The Appellant1 requests a rehearing, based upon the same record
pursuant to 37 C.F.R. § 41.50(b)(2) (Second Request for Rehearing filed
February 12, 2020; “Second Req. Reh’g”), of our first Decision on Request
for Rehearing Appeal entered January 27, 2020 (“First Dec. Req. Reh’g”).2
We have jurisdiction under 35 U.S.C. § 6. For the reasons given below, we
deny the Appellant’s second Request for Rehearing.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Inventor, Matthew Earley, is the Applicant and also
the real party in interest (Appeal Brief filed February 8, 2018 (“Appeal Br.”)
at 3).
2 In our first Decision on Request for Rehearing, we reaffirmed the Primary
Examiner’s final decision to reject claims 26–29 but designated our decision
as including a new ground of rejection given the Appellant’s pro se status
and the complex nature of this prosecution (First Dec. Req. Reh’g. 2).
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Application 12/925,235

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According to the Appellant, the arguments in the second Request for
Rehearing are “directed exclusively at independent claim 26 with a focus on
disclosed and inherent characteristics of prior art related to size, function,
operation, and structure of the claimed invention” (Second Req. Reh’g 1).
Therefore, all claims on appeal stand or fall with claim 26. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have fully considered the Appellant’s arguments in this Second
Request for Rehearing, but these arguments are unpersuasive to establish
that we misapprehended or overlooked any point in our First Decision on
Request for Rehearing. 37 C.F.R. § 41.52(a).
The Appellant argues that Simon,3 which the Examiner cites for the
“induction generator” limitations in claim 26 (Final Act. 9), “is sized to
reach rated power at approximately 12 m/s” and, therefore, “would not
permit the production of increasing amounts of electrical energy through 24
m/s as is accomplished in the claimed invention” (Second Req. Reh’g 2).
According to the Appellant, “[a]n induction generator with a 12 m/s rating
would render the claimed invention inoperable for its intended use”—i.e.,
where “[t]he claimed invention is unique in its ability to generate increasing
amounts of energy through 24 m/s” (id. at 2–3).
The Appellant’s argument regarding Simon’s induction generator,
however, is not supported by objective evidence (e.g., a sworn declaration).4

3 US 2010/0207396 A1, published August 19, 2010.
4 In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Mere argument or
conclusory statements in the specification does not suffice.”); In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.”).
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Application 12/925,235

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Simon teaches that an induction generator provides a cost-effective machine
for converting rotational energy to electricity for power to an electric grid
(Simon ¶ 26). According to Simon, “[t]he input energy from [a] turbine . . .
provides rotational power to the output . . . that attempts to force the
induction generator to rotate faster than its reference speed” and that “[t]his
places the induction generator in a positive slip condition and causes it to
generate power” (id.). Given that (i) Simon does not place any limitations
on wind speed (id. ¶ 63 (teaching that “[s]pecific sizing of the generators is
dependent upon turbine size and efficiency” and also showing an exemplary
turbine size of 10 m radius and 45% efficiency only), and (ii) Earley teaches
that the centrifugal weight control (CWC) described therein permits
additional energy to be transformed into electricity at higher than
conventional flow speeds (Earley, col. 1, ll. 15–33; col. 2, ll. 14–20), we
conclude that a person having ordinary skill in the art would have found it
obvious to size and select an induction generator as suggested by Simon to
match the enhanced capabilities of Earley’s CWC.5 The Appellant does not
offer objective evidence that such a modification of Earley’s system would
have been beyond the technical grasp of a person having ordinary skill in the
art.6 Thus, although we appreciate that claim 26’s preamble language recites
a new capability rather than merely an intended use, this capability was

5 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“[F]amiliar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.”).
6 KSR, 550 U.S. at 421 (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.”).
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already disclosed in Earley, as we recounted above and in our prior
Decisions, and when Earley and Simon are combined, the advantages latent
in Earley would reasonably be expected to flow from their combination.
The Appellant argues that “[i]n the claimed invention[,] the CWC acts
as a buffer, accommodates gear changes, and plays a minor role in
controlling and stopping the wind turbine as wind speeds approach 25 m/s”
(Second Req. Reh’g at 3 (emphasis added)). In addition, referring to
arguments offered earlier in the prosecution, the Appellant argues that
“current wind turbines” generate increasing amounts of energy up to a wind
speed of 15 m/s but then energy generation flattens beyond that wind speed
(id.) (emphasis omitted). With specific reference to Earley’s Figures 1 and
3, the Appellant argues that Earley’s CWC functions as an air brake and
would inhibit the kind of energy production that is quantified in the current
application (id. at 7). According to the Appellant, the rotating CWC guides,
jackscrews, and weights will impart a certain amount of drag that would
increase as the weights extend during routine operation (id.). This
allegation, however, amounts to mere argument, not objective evidence,
relative to Earley’s system including an improved CWC.7 In this regard, the
Appellant’s argument appears to be at odds with the disclosures found in
Earley and the current Specification (Earley, col. 1, ll. 15–33; col. 2, ll. 14–
20; Specification filed October 18, 2010 (“Spec.”) 1, ll. 14–16). The
Appellant does not direct us to any language in claim 26 that would
positively exclude rotating CWC guides, jackscrews, or weights.
The Appellant argues:

7 In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
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Figure 1 . . . in prior art of Earley discloses CWC with an
identical diameter to rotor/blade assembly. In the claimed
invention this would be 36 meters. It is inherently a very large
air brake. The prior art of Earley discloses both an electro-
mechanical and (inherent) aerodynamic means for speed control
through 24 m/s.
The claimed invention is operationally unique in that it has
no aerodynamic means of controlling rotor speed. It offers two
electromechanical means of speed control. They are opposing
torque of the induction generator rated at 25 m/s and CWC.
CWC in the claimed invention is at the bottom of the tower; has
a ten ft. diameter; extends and retracts weights totaling 8
thousand pounds.
Examiner does not modify the induction generator so that
it would be effective in the claimed invention. Per figure 6 of the
claimed invention the Simon generator sized for rated power at
12 m/s would have a rating of 479 kW. The induction generator
employed in the claimed invention would have a rating of
approximately 2,308 kW. (See fig. #6 / power column – in
specification).
(Second Req. Reh’g 5).
Again, the Appellant’s argument is based merely on conclusory
statements that are not accompanied by any objective evidence (e.g.,
declaration evidence) providing detailed specifics of the systems used for
comparison.8 But even if this argument had been supported by objective
evidence, claim 26 does not recite any of the argued features (e.g., a
limitation on air brake size, the exclusion of an aerodynamic means, a CWC
diameter, ability to extend or retract weights totaling eight thousand pounds,

8 De Blauwe, 736 F.2d at 705; Lindner, 457 F.2d at 508.
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Application 12/925,235

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or induction generator rating) relied on for patentability.9 Also, the
Appellant points to Figure 6 of the subject application, but that Figure is
described as “a 20-year projection for a 36-meter system with power totals at
15 m/s for current solution and 25 m/s for the discussed solution” (Spec. 1,
ll. 20–21). The specific details of the “current solution” and the “discussed
solution” are not provided, so a meaningful comparison of the claimed
invention against the closest prior art, which is Earley, cannot be undertaken.
For these reasons and those provided in our earlier Decisions, we
uphold the Examiner’s rejection.
IV. CONCLUSION
In summary:
Outcome of Decision on Rehearing
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
26–29 103(a) Earley, Carter,
Simon
26–29

Outcome of Appeal after Rehearing:

Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
26–29 103(a) Earley, Carter,
Simon
26–29

9 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.”).
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Application 12/925,235

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

DENIED