12703916 (P.T.A.B. Oct. 31, 2016)

Ex Parte Bosselmann et al

Patent Trial and Appeal BoardOct 31, 2016

12703916 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121703,916 02/11/2010 22116 7590 11/02/2016 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR Thomas Bosselmann 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2009P02089US 5104 EXAMINER GRAY, SUNGHEE Y ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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 DR. THOMAS BOSSELMANN, HAGEN HERTSCH, DR, JOACHIM KAISER, NILS-MICHAEL THEUNE and DR. MICHAEL WILLSCH Appeal2015-004665 Application 12/703,916 Technology Center 2800 Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-004665 Application 12/703,916 Appellants appeal under 35 U.S.C. Â§ 134 the rejection of claims 8-20, and 22-24. Claim 21 was objected to by the Examiner as being dependent upon a rejected base claim but would be allowable if rewritten in independent form (Ans. 7). We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. Appellants' invention is directed to an apparatus and a method for testing the manufacturing quality of a rotor blade of a wind energy installation (Spec. 1 :6-9). Claims 8 and 12 are illustrative: 8. An apparatus for checking the manufacturing quality for a rotor blade of a wind energy installation, comprising: a light source arranged to emit light onto a section of the rotor blade at an angle relative to a surface of the rotor blade at that section, the angle not being a right angle; and a position-sensitive detection device is arranged outside of the path of the emitted light and arranged in a path of the reflection of the emitted light off of a fiber mat at the section of the rotor blade in order to receive said reflection, wherein a defect is detected based on a position of the reflection received on the position-sensitive detection device. 12. A method for evaluate the manufacturing quality for a rotor blade of a wind energy installation, comprising: beaming a light from a light source onto the rotor blade at an angle relative to a surface of the rotor blade, the angle not being a right angle; receiving the light reflected from a fiber mat below the surface of the rotor blade by a detection device arranged in the path of the reflected light; 2 Appeal2015-004665 Application 12/703,916 detecting the received light reflected from the fiber mat at a first position of the detection device; determining the location of the fiber mat from the detected position; and using the detected position to evaluate the manufacturing quality. Appellants appeal the following rejections: 1. Claims 8, 9, 11-16, 18, 23, and 24 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Aloisio Jr., et al., (US 5,943,126 issued Aug. 24, 1999; hereinafter "Aloisio") in view of Burchardt et al., (US 2009/0262331 Al, published Oct. 22, 2009; hereinafter "Burchardt"). 2. Claims 10 and 17 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Aloisio in view of Burchardt and Sonda (US 2008/0278718 Al, published Nov.13, 2008). 3. Claims 19, 20, and 22 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Aloisio in view of Burchardt and Simpson et al., (US 6,683,695 issued Jan, 27, 2004; hereinafter "Simpson"). Appellants argue the subject matter of claims 8, 12, 23 and 24. For reasons evident below, we focus on claims 8, 12 and 23. FINDINGS OF FACT & ANALYSIS CLAIMS 8 AND 23: Apparatus The Examiner finds that Aloisio discloses an apparatus for the inspection of an optical fiber that comprises light source 7 arranged to emit 3 Appeal2015-004665 Application 12/703,916 light at an angle relative to a surface of the fiber at an angle that is not a right angle, position-sensitive detection device 9 arranged outside of the path of the emitted light and arranged in a path of the reflection of the emitted light off the fiber, wherein a defect is detected based on a position of the reflection received on the position-sensitive device (Ans. 2-3). The Examiner finds that Aloisio does not teach use of the device for a rotor blade (Ans. 3). The Examiner finds that Burchardt teaches a rotor having a fiber mat (Ans. 3). The Examiner concludes that it would have been obvious to use Aloisio' s apparatus and method to check the quality of a rotor blade or any other product as desired using a high accuracy inspection system (Ans. 3). The Examiner further finds that the recitation in claim 8 of the rotor blade with a fiber mat is a material or article worked upon by the apparatus (Ans. 16). The Examiner finds that Aloisio's apparatus includes all the structural limitations recited in claim 8. Id. Appellants do not contest this finding of the Examiner (Reply Br. 2-5). An apparatus claim must distinguish structurally over what is claimed rather than in how the particular device is used. In re Otto, 312 F.2d 937, 940 (CCPA 1963). In the present appeal, there is no dispute that Aloisio teaches all the structural limitations of claim 8 (i.e., a light source for emitting light at an angle, and a position-sensitive detection device arranged outside the path of the light and arranged in a path of the reflected light). The recitation of a rotor blade having a fiber mat is an intended use of the apparatus. Appellants fail to direct us to any structural difference between Aloisio' s non-destructive detection device and the claimed apparatus. The rotor blade and fiber mat as recited in claims 8 and 23 make up the article 4 Appeal2015-004665 Application 12/703,916 worked upon by the apparatus which does not patentably distinguish the claimed apparatus from the device of Aloisio. For the above reasons, we affirm the Examiner'sÂ§ 103 rejection of the apparatus claims over Aloisio and Burchardt. CLAIM 12: Method Method claim 12 is on a different footing than apparatus claims 8 and 23. Claim 12 is directed to a method of evaluating product quality for a rotor blade wherein light is directed at the rotor blade, the rotor blade receives light reflected from a fiber mat in the rotor blade is received by a detection device arranged in the path of the reflected light, the reflected light is detected and location of the fiber mat is determined from the detected position. Method or process claims require that patentable weight be given to the article or material worked upon. The Examiner's statement of the rejection is the same as discussed above with regard to claim 8 and the combination of Aloisio and Burchardt. The Examiner further states that it would have been obvious to use the modified method of Aloisio to inspect a rotor blade comprising a fiber mat positioned below a surface of the rotor blade to ensure the better operation of the rotor blade by using known methods of non-destructive inspection systems (Ans. 5---6). Appellants argue that the Examiner's reason for the combination is based upon a conclusory statement lacking rational underpinning (App.Br. 9). The Examiner has not described sufficiently why it would have been obvious to combine Burchardt's method of inspecting a rotor blade 5 Appeal2015-004665 Application 12/703,916 containing optical fiber sensors for measuring the load in and on the rotor blade with Aloisio' s method of inspecting the surface qualities of an optical fiber coating. The Examiner's finding that one ordinary skill in the art would have combined these two methods in order to provide better operation using known methods of inspection is conclusory (Ans. 5---6). Burchardt's method already uses optical fibers and measuring means to determine if there is defect in the rotor blade. Aloisio' s method uses a reflected light source to determine if there is a problem with the surface coating of an optical fiber. The Examiner has not explained why one of ordinary skill in the art would implement Aloisio' s method of detecting the surface quality of a coating on an optical fiber with Burchardt' s method of monitoring a rotor blade for defects that cause breaks or cracks in the optical fibers under load using optical fibers embedded or attached to the surface of a rotor blade. The Examiner seems to indicate that one of ordinary skill in the art could use Aloisio's method to inspect any article including a rotor blade as taught by Burchardt (Ans. 3). The Examiner's reasoning fails to answer the question of why one ordinary skill in the art would use Aloisio' s surface quality inspection system to monitor Burchardt's rotor blade and embedded fiber optic network. Aloisio does not teach that that the method of inspecting the surface of an optical fiber could be used to monitor fibers embedded in a rotor blade. Rather, Aloisio teaches that the disclosed method could be used for detecting other types of surface qualities (col. 8, 11. 40-45). It appears that the Examiner's combination of Aloisio and Burchardt to meet the elements of Appellants' method claims is based on impermissible hindsight. 6 Appeal2015-004665 Application 12/703,916 On this record, we affirm theÂ§ 103(a) rejections of apparatus claims 8-11, 18-20, and 23 over Aloisio and Burchardt. We reverse the Â§ 103(a) rejections of method claims 12-17, 21, 22 and 24 over Aloisio and Burchardt. Rejection (3) is not separately argued. Based on the dependency of claims 19, 20 and 22, we affirm theÂ§ 103(a) rejection of claims 19 and 20 and we reverse theÂ§ 103(a) rejection of claim 22 over Aloisio in view of Burchardt and Simpson. DECISION The Examiner's decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). ORDER AFFIRMED-IN-PART 7