Ex Parte Enevoldsen et al

Patent Trial and Appeal Board

Nov 15, 2017

13352627 (P.T.A.B. Nov. 15, 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.
13/352,627 01/18/2012 Peder Bay Enevoldsen 2010P23547US 4502
22116 7590 11/17/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
CHRISTENSEN, DANIELLE M
Orlando, EL 32817 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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 PEDER BAY ENEVOLDSEN,
JENS J0RGEN 0STERGAARD KRISTENSEN,
JASON STEGE, and CARSTEN THRUE
Appeal 2016-003440
Application 13/352,627
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peder Bay Enevoldsen et al. (“Appellants”)1 seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated November 21, 2014 (“Final Act.”), and as further
explained in the Advisory Action dated March 12, 2015 (“Adv. Act.”),
rejecting claims 1, 3, 4, 6-10, 12, 13, 15, and 16. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Siemens
Aktiengesellschaft Munich, Germany. Appeal Br. 2.
Appeal 2016-003440
Application 13/352,627
BACKGROUND
The disclosed subject matter “relates to a wind turbine rotor blade
element and to a wind turbine rotor blade with advantageous aerodynamic
properties.” Spec. ^ 2. Claim 1, the sole independent claim,2 is reproduced
below, with emphasis added:
1. A wind turbine rotor blade element,
comprising:
a first portion comprising a rear surface for
facing a surface of a wind turbine rotor blade; and
a second portion connected to the first
portion, the second portion comprising a top surface
arranged at an angle between 90° and 180° with
respect to the rear surface of the first portion,
a transition portion arranged between the
first portion and the second portion, the transition
portion comprising a plurality of corrugations, and
wherein the first portion comprises a top
surface which is arranged at an angle between 90°
and 180° with respect to the top surface of the
second portion.
REJECTIONS
1. Claims 3 and 16 stand rejected under 35U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1,3,4, 6-10, 12, 13, 15, and 16 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Fuglsang (US 2012/0195764 Al,
2 Claim 10 depends from claim 1 because claim 10 contains a
reference to claim 1 and specifies further limitation of the subject matter of
claim 1. See 35 U.S.C. § 112, fourth paragraph.
2
Appeal 2016-003440
Application 13/352,627
published Aug. 2, 2012) and Petsche (US 2009/0274559 Al, published Nov.
5, 2009).
DISCUSSION
Rejection 1 — The rejection of claims 3 and 16 under
35 U.S.C. § 112, second paragraph
In the Rejection, the Examiner stated that “[cjlaims 3 and 16 depend
upon a cancelled claim[,] which renders them indefinite.” Final Act. 3.
Appellants argue (1) that “[t]he after final amendment to claim 3,
which was entered, corrects the dependency from canceled claim 2 to claim
1 and overcomes the rejection” and (2) that “[t]he after final amendment to
claim 16, which was entered, corrects the dependency from canceled claim
14 to claim 10 and overcomes the rejection.” Appeal Br. 3.
We first address the status of Rejection 1. Although this Rejection
was set forth in the Final Office Action, it is not provided in the “Grounds of
Rejection to be Reviewed on Appeal” in the Answer (as is Rejection 2). See
Final Act. 3; Ans. 2-6. In the Answer, the Examiner does not, however, list
Rejection 1 as withdrawn. Ans. 2. On these facts, we do not consider
Rejection 1 as formally withdrawn.
Turning to the merits, we agree with Appellants that the Amendments
(dated February 23, 2015) resolve the dependency issues identified in the
Rejection. See Response to Final Office Action 2 (dated Feb. 23, 2015);
Amendments to the Claims 1, 3 (dated Feb. 23, 2015). We also agree that
the Examiner entered those Amendments for purposes of this Appeal. See
Adv. Act. 1 (Box 7). Thus, we do not sustain the rejection of claims 3 and
16 under 35 U.S.C. § 112, second paragraph.
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Application 13/352,627
Rejection 2 — The rejection of claims 1, 3, 4, 6—10,
12, 13, 15, and 16 under 35 U.S.C. § 103(a)
Independent claim 1 recites, among other limitations, “a transition
portion arranged between the first portion and the second portion, the
transition portion comprising a plurality of corrugations.” Appeal Br. 7
(Claims App.). In the Rejection, the Examiner found that Fuglsang discloses
“a transition portion arranged between the first portion (190) and the second
portion (197).” Final Act. 4 (citing to portions of Fuglsang discussing
Figure 19); Ans. 2. In addition, the Examiner provided an annotated version
of a portion of Figure 19 of Fuglsang (reproduced below), identifying a
“Transition Portion”:
Final Act. 4; Ans. 3. Without the annotation by the Examiner, Figure 19 of
Fuglsang “shows a schematic view of a second embodiment of a flow
guiding device part according to the invention” of Fuglsang. Fuglsang 87.
The Examiner stated that “[wjhile Fuglsang (Fig. 13, 14) discloses that a
plurality of flow guiding device parts can be grouped together to form a
corrugated pattern, Fuglsang fails to disclose that the transition portion of
each device comprises a plurality of corrugations.” Final Act. 4; Ans. 3.
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Appeal 2016-003440
Application 13/352,627
The Examiner found that “Petsche (Fig. 3) discloses a device (51), which is
used as a spoiler that is attached to a wind turbine rotor blade” and that
“Petsche (Abstract) discloses that the device is made from one piece by
referring to the device as a singular entity, rather than a plurality of devices.”
Ans. 3; see also Final Act. 4 (similar findings). According to the Examiner,
it would have been obvious for one of ordinary skill in the art at the time of
the invention to “modify Fuglsang’s rotor blade element by trying to form it
as a single piece, as taught by Petsche, or to try forming it as multiple larger
pieces, in order to produce the predictable result of simplifying installation
of the part.” Ans. 3—4.
Appellants argue that “[wjhile Fuglsang teaches a plurality of
interconnected wind turbine elements which form a corrugated design in the
longitudinal direction due to the interconnection, this does [not] teach that
the corrugation is in the transition portion.” Appeal Br. 6. Further,
according to Appellants, “the combination does not teach that the
corrugation is in the transition portion, where the first portion changes to
the second portion.” Id. For the reasons below, we agree with Appellants
that the relied-upon prior art does not teach the identified “plurality of
corrugations” as “arranged between the first portion and the second portion”
identified by the Examiner.
As the “plurality of corrugations,” the Examiner relies on the
individual “flow guiding device parts” 670 and 770 of Fuglsang (Figs. 13
and 14, respectively) as modified in view of Petsche such that the individual
structures are formed as a single piece. See Ans. 3—4. In response to
Appellants’ argument above, the Examiner takes the positions (1) that
Figures 13 and 14 of Fuglsang depict (in different embodiments) views of
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Appeal 2016-003440
Application 13/352,627
the edge of the identified “second portion” (element 197 in Figure 19) when
looking towards the identified “transition portion” and (2) that the identified
“corrugations” extend from that edge of element 197 to the identified
“transition portion.” See Ans. 10 (“In Figures 12 and 13 of Fuglsang a top
view of the wind turbine rotor blade element is shown. From Figures 12 and
13 [,] Fuglsang discloses that the curve of the first portion of the wind turbine
rotor blade element extends to the bend where the wind turbine rotor blade
element becomes the second portion.”).3 The record does not support the
Examiner’s interpretation of Fuglsang.
As noted by Appellants (Reply Br. 3), Fuglsang discloses various
embodiments of its “flow guiding device parts,” including element 670 in
Figure 13, element 770 in Figure 14, and element 170' in Figure 19. See
Fuglsang 123, 124, 105; see also^\\ 114, 115, 117 (discussing “flow
guiding device parts” 170 in Figs. 5, 6, 7, respectively); ^ 118 (discussing
“flow guiding device parts” 270 in Fig. 8); 119, 120 (discussing “flow
guiding device parts” 370 in Figs. 9, 10, respectively); ^ 121 (discussing
“flow guiding device parts” 470 in Fig. 11); ]f 122 (discussing “flow guiding
device parts” 570 in Fig. 12). Thus, contrary to the Examiner’s position, the
structures shown in, for example, Figures 13 and 14 of Fuglsang are
alternatives to the embodiment of the “flow guiding device parts” shown in
Figure 19, rather than features of the Figure 19 embodiment.
Moreover, the Examiner’s proposed modification to Fuglsang (based
on Petsche) relates to forming the multiple “flow guiding device parts” of
Figures 13 and 14 “as a single piece” or “as multiple larger pieces” (Ans. 3-
3 To the extent the Examiner relies on Figures 12 and 13 rather than
13 and 14, the analysis below applies equally to either combination.
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Appeal 2016-003440
Application 13/352,627
4); the modification does not involve changing the configuration or shape of
the identified “second portion”—element 197 in Figure 19. For these
reasons, we do not sustain the rejection of claim 1, or the rejection of claims
3, 4, 6-10, 12, 13, 15, and 16, which depend from claim 1.
DECISION
We reverse the decision to reject claims 3 and 16 under 35 U.S.C.
§ 112, second paragraph, and we reverse the decision to reject claims 1,3,4,
6-10, 12, 13, 15, and 16 under 35 U.S.C. § 103(a).
REVERSED
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