Ex Parte Prebio

Patent Trial and Appeal Board

Nov 14, 2014

12528504 (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER PREBLO
____________

Appeal 2012-007497
Application 12/528,5041
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant states that the real party in interest is AMSC WINDTEC GMBH.
Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant timely appeals under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 21–32 and 35–422 of Appellant’s Patent
Application Number 12/528,504. Appeal Br. 1. Claims 1–20, 33, and 34
have been cancelled. Id. at 1, 39–41. We have jurisdiction under 35 U.S.C.
§ 6.
The claimed invention pertains to “a cable suspension arrangement for
a wind energy converter, a corresponding mounting method and a
corresponding spacer plate.” Spec. 26:34.
Claim 21, which is reprinted below, is illustrative of the claimed
subject matter.
21. A cable suspension arrangement of a wind energy
converter including a tower and a nacelle provided on the
tower, the arrangement comprising:
a plurality of spacer plates, each including a
suspension hole and a plurality of cable through-
holes, the plurality of cable through-holes
configured to receive a plurality of cables
suspended from the nacelle;
a suspension device attached to the nacelle and led
through the suspension holes; and
a fastener configured to fix the spacer plates at
different positions on the suspension device such
that they can at least not lower their respective
position.
Appeal Br. 39.

2 Appellant indicates on Page 1 of its Appeal Brief that claims 21–42 are
pending and on appeal. However, Appellant later clarifies that claims 33
and 34 have been cancelled, and the Examiner also makes clear that claims
33 and 34 have been cancelled. Appeal Br. 40; Ans. 3.
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The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Kirkegaard U.S. 6,713,891 B2 Mar. 30, 2004
Araki JP 2005137097A. May 26, 2005
Ano JP 2006246549 A Sept. 14, 2006
Kinoshita JP 2008298051 A Dec. 11, 2008
Kennedy CA 2 475 261 A1 Jan. 16, 2006
Ans. 4.
Appellant asks us to review the following rejections:
1) The rejection under 35 U.S.C. § 102(b) of claims 21, 25, and
28–30 as being anticipated by Araki;
2) The rejection under 35 U.S.C. § 102( b) of claims 21, 22, 25, and
28 as being anticipated by Ano;
3) The rejection under 35 U.S.C. § 102(a) of claims 21–23 and 32 as
being anticipated by Kinoshita;
4) The rejection under 35 U.S.C. § 102(b) of claims 21, 25, 26, 32,
and 35–38 as being anticipated by Kirkegaard;
5) The rejection under 35 U.S.C. § 102(a) of claims 39–41 as being
anticipated by Kennedy;
6) The rejection under 35 U.S.C. § 103(a) of claim 24 as being
unpatentable over Kinoshita in view of admitted prior art;
7) The rejection under 35 U.S.C. § 103 (a) of claim 27 as being
unpatentable over Kirkegaard;
8) The rejection under 35 U.S.C. § 103(a) of claim 31 as being
unpatentable over the combination of Kinoshita in view of
Kennedy; and
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9) The rejection under 35 U.S.C. 103(a) of claim 42 as being
unpatentable over Kennedy.
See Appeal Br. 23; Ans. 411.
We AFFIRM-IN-PART.

ANALYSIS
Appellant’s Argument Concerning
Machine Translations
Before addressing the substance of the Examiner’s rejections,
Appellant points out that the Examiner is citing three Japanese-language
prior art references (Araki, Ano, and Kinoshita), and argues that the
Examiner relies on unintelligible machine translations of such low quality
that they “make[] meaningful Board review impossible.” Appeal Br. 34.
We note that the record on appeal only contains machine translations of two
of these references (Araki and Ano). Although the Japanese-language
Kinoshita reference contains an English-language abstract, the record does
not contain a full translation of the Kinoshita reference.
The Examiner is permitted to rely on machine translations. See MPEP
§ 1207.02 1200–21 (Rev. 9, August 2012). To the extent Appellant disputes
the adequacy or accuracy of the Examiner’s machine translations, Appellant
could have provided its own translations. But Appellant elected not to do so.
Under these circumstances, we are not persuaded that the Examiner erred in
relying on machine translations of the Araki and Ano prior art references.
Thus, we proceed to analyze Appellant’s arguments regarding the substance
of the Examiner’s rejections.
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Rejection of Claims 21, 25, and
28–30 as Anticipated by Araki

Claim 21
The Examiner finds that the structure depicted in Figure 4 of Araki
corresponds to the “spacer plates” of claim 21. See Ans. 13, citing Araki3
Fig. 4. Even though this structure is made of separate components, the
Examiner finds that the “entire structure and substructure is bolted together
such that it is integral,” and determines that it constitutes a spacer plate
within the meaning of claim 21. Ans. 14. Appellant argues that this
structure does not constitute a spacer plate because it is “a framework made
by bolting together metal pieces to form an octagonal perimeter braced by
two crossbars.” Appeal Br. 5. In other words, Appellant argues that the
claim term “plate” should be construed to exclude a structure that is
assembled from two or more components.
During prosecution, claims are given their “broadest reasonable
interpretation consistent with the specification.” In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The
“broadest reasonable interpretation” standard does not prejudice patent
applicants, who have the ability to correct errors in claim language and to
adjust the scope of claim protection as needed during prosecution by
amending the claims. In re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir.
1984).

3 Citations to paragraphs in the Araki and Ano references refer to the
machine translations of those references. Citations to figures in the Araki,
Ano, and Kinoshita references refer to the original, untranslated references.
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Appellant fails to offer any evidence to support its argument that the
broadest reasonable interpretation of the claim term spacer plate would
exclude any structure assembled from multiple components. There is no
contention that Appellant acted as a lexicographer by including a specific
definition of spacer plate in the specification. There is also no contention
that the prosecution history of Appellant’s application contains a disclaimer
that limits the scope of this claim term. In addition, Appellant does not cite
any dictionary definitions or other extrinsic evidence in support of its
position.
Appellant argues that “[o]ne can see by immediate visual inspection
that the structure shown in Araki does not look anything like a spacer plate.”
Appeal Br. 7. But Appellant does explain—much less cite evidence to
show—what one of ordinary skill would expect a spacer plate to look like.
Appellant also argues that Figure 4 of Araki does not look like the spacer
plates disclosed in Appellant’s specification. But it would also be improper
to limit the definition of spacer plate to the particular embodiments disclosed
in Appellant’s specification. In view of Appellant’s failure to offer any
evidence that the Examiner’s interpretation of claim 21 is so broad as to be
unreasonable, we are not persuaded that the Examiner erred in finding that
Araki discloses a spacer plate of the type required by claim 21.
Appellant also argues that Araki fails to teach spacer plates that each
include “a suspension hole,” as required by claim 21. Appeal Br. 7. The
Examiner finds that guidance sleeve 33, depicted in Figure 5 of Araki,
corresponds to the suspension hole of claim 21. See Ans. 15; Araki ¶ 19.
Appellant argues that this guidance sleeve is not a hole because it is made by
“bolt[ing] two metal pieces [together] in such a way that the pieces define a
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gap.” Appeal Br. 8. In other words, Appellant contends that a “gap”
between two separate structures cannot be a “hole” within the meaning of
claim 21. But Appellant does not allege that the specification requires such
a narrow construction, does not identify any prosecution disclaimer that
limits the scope of this claim term, and does not offer any dictionary
definitions or other extrinsic evidence that one of ordinary skill in the art
would interpret this claim term so narrowly. Thus, we are not persuaded that
the Examiner erred in finding that Araki discloses a suspension hole of the
type required by claim 21.
Appellant further argues that Araki fails to teach “a plurality of cable
through holes,” as required by claim 21. Appeal Br. 8. The Examiner finds
that ring-like clamping structure 40 meets the plurality of cable through
holes limitation. Ans. 15. Appellant responds by once again asking us to
construe the term “hole” narrowly, so as to exclude what Appellant calls the
“passageways” within ring-like clamping structure 40. Appeal Br. 9. This is
essentially the same argument that Appellant made previously—that the
claim term “hole” does not read on a void between two separate structures.
Appellant once again does not allege that the specification requires such a
narrow construction, does not identify any prosecution disclaimer that limits
the scope of this claim term, and does not offer any dictionary definitions or
other extrinsic evidence that one of ordinary skill in the art would construe
this claim term so narrowly. Thus, we are not persuaded that the Examiner
erred in determining that Araki teaches a plurality of cable through holes.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 21 as anticipated by Araki.
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Claims 25, 28, and 30
Appellant does not make any separate patentability arguments with
respect to claims 25, 28, and 30, all of which depend from claim 21. Thus,
we also sustain the Examiner’s rejection of claims 25, 28, and 30 as
anticipated by Araki.
Claim 29
Appellant argues that claim 29 is not anticipated by Araki because
Araki “does not disclose a guide that is both ‘inserted into the suspension
holes’ and ‘configured to guide an upward motion of the spacer plates along
the suspension device,’” as set forth in claim 29. Appeal Br. 9. The
Examiner finds that spacer 50, depicted in Figure 5 of Araki, meets this
claim limitation. Ans. 15. Appellant argues that Figure 5 discloses that
“frame 30 is clamped to the wire 20” and therefore “cannot move upward or
downward along the wire 20.” Appeal Br. 10 (emphasis omitted).
Appellant also asserts that Araki does not contain any disclosure of wire 20
of Araki performing as a guide. Id. But nothing in Figure 5 indicates that
the structure identified by the Examiner is clamped to wire 20. To the
contrary, as the Examiner points out, wire 20 is separated from structure 30
by spacer 50. Ans. 15; see also Araki ¶ 28. Appellant’s contention that wire
20 does not act as a guide is also undermined by the fact that Araki refers to
structure 33—which surrounds wire 20—as a “guidance sleeve.” Araki
¶ 19. For the foregoing reasons, Appellant’s arguments are not persuasive.
Thus, we sustain the Examiner’s rejection of claim 29 as anticipated by
Araki.
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Rejection of Claims 21, 22, 25, and
28 as Anticipated by Ano
Claim 21
Appellant makes four arguments in response to the Examiner’s
determination that Ano anticipates claim 21. First, Appellant argues that the
Examiner erred in finding that support 15 of Ano—a multi-part structure—
meets the “spacer plate” claim limitation. Appeal Br. 11. In support of this
position, Appellant repeats its argument that the claim term “spacer plate”
does not encompass “a framework made by bolting together metal pieces.”
Id. This argument is not persuasive for the reasons set forth above.
Second, Appellant argues that the Examiner erred in finding that the
spaces through which cables 5(a) pass meet the “cable through-holes”
limitation of claim 21. Appellant argues that these spaces are “the result of
clamping a U-bolt to a side of” the support that the Examiner finds is a
“spacer plate.” Appeal Br. 13. Thus, Appellant argues, these holes are not
“in a spacer plate” as required by claim 21. Id. (emphasis in original). But
the Examiner makes clear in the Answer that the U-bolts are part of the
structure that corresponds to the spacer plate claim limitation. Ans. 19. In
the Reply Brief, Appellant reiterates the argument that the claim term “hole”
should be construed narrowly so as to not encompass voids between two
structures attached to one another. Reply Br. 19. This argument is not
persuasive for the reasons discussed above. Thus, we are not persuaded by
Appellant’s arguments that the Examiner erred in finding that Ano meets the
“cable through-holes” claim limitation.
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Third, Appellant argues that the Examiner erred in finding that the
Ano reference discloses “a plurality of spacer plates.” Appeal Br. 14.
Appellant asserts that the Examiner erroneously assumes that each level of
the support structure depicted in Figure 1 includes the structure that the
Examiner finds is a spacer plate, even though the Ano reference contains no
such teaching. Id. In response, the Examiner points to paragraph 42 of Ano,
and finds that this paragraph teaches that the spacer plates are “fitted loosely
into the height positions B–E of . . . each floor 11 in the tower at the support
wire 12.” Ans. 19, citing Ano ¶ 42 (emphasis in original). Appellant’s
Reply Brief does not dispute the accuracy of the Examiner’s finding
regarding the teachings of paragraph 42 of Ano. Thus, we are not persuaded
by Appellant’s argument that Ano does not disclose “a plurality” of spacer
plates.
Forth, Appellant argues that Ano does not teach “a fastener
configured to fix the spacer plates at different positions on the suspension
device such that they can at least not lower their respective position,” as
required by claim 21. Appeal Br. 15. Appellant contends that the structure
identified by the Examiner as corresponding to the claimed fastener—bolt
18—does not fix the position of structure 15 (i.e., the spacer plate) on
support wire 12 (i.e., the suspension device). Id. In response, the Examiner
finds that paragraph 36 of Ano teaches that bolt 18 “pinch[es]” the hole
within structure 15 to support wire 12, and that fastener 18 thereby prevents
the spacer plates from lowering. Ans. 21, citing Ano ¶ 36. Appellant’s
Reply Brief does not dispute the correctness of the Examiner’s finding
regarding paragraph 36 of Ano. Thus, we are not persuaded by Appellant’s
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argument that Ano does not teach a fastener of the type required by claim
21.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 21 as anticipated by Ano.
Claims 22 and 25
Appellant does not make any separate patentability arguments with
respect to claims 22 and 25, both of which depend from claim 21. Thus, we
also sustain the Examiner’s rejection of claims 22 and 25 as anticipated by
Ano.
Claim 28
Claim 28 further requires that the fastener of claim 21 include
“clamping fasteners.” Appeal Br. 40. Appellant asserts that bolt 18 of Ano
is not a clamping fastener of the type required by claim 28. Id. at 16. In
response, the Examiner reiterates the finding that bolt 18 of Ano clamps the
framed structure together so that it “pinch[es]” the suspension device. Ans.
21, citing Ano ¶ 36. Appellant’s Reply does not dispute the Examiner’s
finding that fastener 18 causes the framed structure to pinch to support wire
12. Thus, we are not persuaded that Ano does not teach “clamping
fasteners” of the type required by claim 28. We, therefore, sustain the
Examiner’s rejection of claim 28 as anticipated by Ano.

Rejection of Claims 21–23 and
32 as Anticipated by Kinoshita
Appellant raises two separate arguments in response to the
Examiner’s determination that Kinoshita anticipates claim 21. First,
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Appellant argues that cable bobbin 110 is not a “suspension device” of the
type required by claim 21. Appeal Br. 17. Second, Appellant argues that
Kinoshita does not teach “a fastener configured to fix the spacer plates at
different positions on the suspension device” as required by claim 21. Id.
The Examiner disagrees with Appellant’s assertions, and finds that cable
bobbin 110 is a suspension device of the type required by claim 21. Ans. 21.
As discussed above, the record does not contain an English-language
translation of the Kinoshita reference. The record only contains an English
translation of the Kinoshita abstract. It appears that the Examiner (who
twice cites to specific paragraphs of a Kinoshita translation, see Ans. 2223)
and Appellant (who implies that a machine translation of Kinoshita exists,
see Appeal Br. 3–4) are in possession of a translation of the entire Kinoshita
reference. But we must decide this dispute on the basis of the record, which
does not contain such a translation.
The English-language abstract of the Kinoshita reference does not
contain teachings sufficient to support the Examiner’s anticipation rejection
of claim 21. For example, the Examiner finds that bobbin 110 of Kinoshita
meets the claim limitation “a suspension device attached to the nacelle and
led through the suspension holes.” Ans. 7–8. But the Kinoshita abstract
does not indicate whether bobbin 110 is either attached to the nacelle, or
“led through” the suspension holes. We therefore determine—based on the
evidence of record—that the Examiner’s finding that Kinoshita teaches all
elements of claim 21 lacks adequate evidentiary support. Thus, we do not
sustain the Examiner’s rejection of claim 21 as anticipated by Kinoshita.
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Claims 22, 23, and 32 depend from claim 21, and therefore
incorporate all limitations of claim 21. Thus, we also do not sustain the
Examiner’s rejection of claims 22, 23, and 32 as anticipated by Kinoshita.

Rejection of Claims 21, 25, 26, 32, and
35–38 as Anticipated by Kirkegaard
Claim 21
Appellant argues that the Examiner made three errors in determining
that claim 21 is anticipated by Kirkegaard. First, Appellant argues that the
spacer plates of Kirkegaard do not each have “a suspension hole and a
plurality of cable through-holes.” Appeal Br. 23 (emphasis in original). The
Examiner finds that Kirkegaard’s opening 38 in Figure 8 meets the
“suspension hole” limitation of claim 21, and that slots 35 and 36 meet the
“cable through-holes” limitation of this claim. Ans. 24. Appellant argues
that these structures are not holes because they are not fully closed. Appeal
Br. 20–23. In response, the Examiner notes that claim terms “must be
‘given their broadest reasonable interpretation consistent with the
specification’” during patent prosecution, and determines that structures 35,
36, and 38 constitute holes because “they go through the thickness of the
plate.” Ans. 24 (citations omitted). The Examiner also notes that
Appellant’s own specification describes opening 38 of Kirkegaard as a
“hole.” Ans. 25, citing Spec. 5:2325. In reply, Appellant asserts that the
specification merely repeats what the Kirkegaard reference says about
opening 38, and that Appellant should not be held to this statement. Reply
Br. 14. Appellant’s arguments are not persuasive.
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The proper construction of a claim term begins with its plain and
ordinary meaning. The Examiner’s claim construction position is consistent
with the plain and ordinary meaning as reflected in dictionary definitions,
which define the term “hole” in a manner that embraces not only apertures,
but also hollow areas, gaps, and cavities.4 The Examiner’s position is also
consistent with Appellant’s own specification, which refers to opening 38 of
Kirkegaard as a hole. Appellant does not offer any evidence that one of
ordinary skill in the art would have interpreted the claim term “hole” to
exclude openings that are not fully closed. Thus, we are not persuaded that
the Examiner erred in finding that Kirkegaard teaches a “suspension hole”
and “cable through-holes.”
Second, Appellant argues that Kirkegaard does not teach “a fastener
configured to fix the spacer plates at different positions on the suspension
device,” as required by claim 21. Appeal Br. 23. The Examiner finds that
this claim limitation is met by Kirkegaard’s slot adjacent to hole 38, which
attaches the spacer plates to wire 7. Ans. 26 (citations omitted). Appellant
acknowledges that Kirkegaard teaches that “[t]he cable spacing device is
suspended down along a wire,” but argues that since “the entire sentence is
in the passive voice, one simply cannot tell from the sentence alone exactly
what is doing the suspending.” Appeal Br. 24, citing Kirkegaard 9:42–44.

4 See, e.g., “hole,” The Penguin English Dictionary (2007), available at
http://search.credoreference.com/content/entry/penguineng/hole1/0
(last visited on Oct. 23, 2014) (“a hollow in something solid; a pit or cavity.
. . . a gap or opening right through something”); “hole,” Chambers 21st
Century Dictionary (2001), available at
http://search.credoreference.com/content/entry/chambdict/hole/0
(last visited Oct. 23, 2014) (“a hollow area or cavity in something solid . . . .
an aperture or gap in or through something”).
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Appellant then speculates that the cable spacing devices of Kirkegaard are
not suspended from wire 7, but are instead “suspended . . . by being
cantilevered from the wall” of the tower. Appeal Br. 25. Appellant’s
argument is not persuasive.
A few lines after the allegedly vague sentence, Kirkegaard makes
clear that cable spacing device is suspended “onto” wire 7. Ans. 26, citing
Kirkegaard 9:4649. Appellant’s cantilever argument is also inconsistent
with the plain and ordinary meaning of the word “suspend” in the
Kirkegaard reference—a word that generally refers to a hanging-type
attachment.5 Thus, we are not persuaded by Appellant’s argument that
Kirkegaard does not teach a fastener configured to fix spacer plates at
different positions on a suspension device.
Third, Appellant argues that Kirkegaard does not teach a suspension
device that is “attached to the nacelle,” as required by claim 21. Appeal Br.
27. This argument is not persuasive. As the Examiner notes, Kirkegaard
teaches that a ladder is mounted to the nacelle, and that wire 7 is attached to
this ladder by cable suspension 5. Ans. 29, citing Kirkegaard 7:717. Thus,
“cable suspension 5 [from which wire 7 extends] is fastened to the ladder 3
and accordingly also fastened to the nacelle.” Kirkegaard 7:911 (emphasis
added). Appellant does not offer any evidence that one of ordinary skill in
the art would interpret the term “attached” in claim 21 to exclude such an

5 See, e.g., “suspend,” The Penguin English Dictionary (2007), available at
http://search.credoreference.com/content/entry/penguineng/suspend/0 (last
visited Oct. 23, 2014) (“to hang (something), esp so that it is free on all sides
except at the point of support”).
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indirect manner of attachment. Thus, we are not persuaded that Kirkegaard
does not teach a suspension device that is “attached to the nacelle.”
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 21 as anticipated by Kirkegaard.
Claims 25 and 26
Appellant does not make any separate patentability arguments with
respect to claims 25 and 26, both of which depend from claim 21. Thus, we
also sustain the Examiner’s rejection of claims 25 and 26 as anticipated by
Kirkegaard.
Claim 32
Appellant argues that the Examiner erred in finding that Kirkegaard
anticipates claim 32 because the spacer plates of Kirkegaard are “snow-
flake” shaped, and not “a circular shape” as required by claim 32. Appeal
Br. 27. In response, the Examiner points out that Kirkegaard discloses that
the spacer plates may have “a polygonal or circular circumference.”
Ans. 29, citing Kirkegaard 9:44. Appellant argues in reply that it is
“completely unclear what it means to have a polygonal circumference or a
circular circumference.” Reply Br. 17. This argument is not persuasive.
The plain and ordinary meaning of the term “circumference” is the
external boundary of an object.6 Thus, a spacer plate with a “circular
circumference” would have a circular shape as required by claim 32.

6 See, e.g., “circumference,” The Penguin English Dictionary (2007),
available at
http://search.credoreference.com/content/entry/penguineng/Circumference/0
(last visited Oct. 23, 2014) (“the external boundary or surface of a figure or
object”).
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Appellant offers no evidence that one of ordinary skill in the art would have
understood the term “circular circumference” in Kirkegaard to have a
different meaning. Thus, we sustain the Examiner’s rejection of claim 32 as
anticipated by Kirkegaard.
Claims 35
Appellant asserts that the Examiner erred in finding that Kirkegaard
anticipates claim 35 because Kirkegaard does not teach the step of “fixing
the cable suspension arrangement on the main frame of the nacelle.” Appeal
Br. 28–29. This is essentially identical to the third argument that Appellant
made with respect to claim 21: that the suspension device is not attached to
the nacelle, but is instead attached to a ladder (a ladder that is attached to the
nacelle). This argument is unpersuasive.
As the Examiner points out, Kirkegaard teaches that cable suspension
5, from which wire 7 extends, is “fastened to the nacelle.” Ans. 29,
Kirkegaard 7:9–11. Appellant does not offer any evidence that one of
ordinary skill in the art would interpret the term “fixing” in claim 35 to
exclude the manner of attachment taught in Kirkegaard. Thus, we sustain
the Examiner’s rejection of claim 35 as anticipated by Kirkegaard.
Claim 37
Appellant argues that the Examiner erred in finding that Kirkegaard
anticipates claim 37 because Kirkegaard does not disclose the step of
“attaching a suspension device to the tower,” as set forth in claim 37.
Appeal Br. 30. In particular, Appellant argues that wire 7 “hangs down the
middle of the tower,” and is not attached to the tower. Id. In response, the
Examiner clarifies that the “suspension device” claim limitation is met by
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the combination of cable suspension 5 and cable 7 of Kirkegaard. Ans. 30.
The Examiner then finds that cable suspension 5 is secured to the tower, as
required by claim 37. Id. (citations omitted). Appellant’s Reply Brief does
not dispute the Examiner’s finding that these components are attached to the
tower. Thus, we are not persuaded that the Examiner erred, and we sustain
the Examiner’s rejection of claim 37 as anticipated by Kirkegaard.
Claims 36 and 38
Appellant does not make any separate patentability arguments with
respect to claims 36 and 36, both of which depend from claim 35. Thus, we
also sustain the Examiner’s rejection of claims 36 and 38 as anticipated by
Kirkegaard.

Rejection of Claims 39–41
as Anticipated by Kennedy
Claim 39
Appellant asserts that the Examiner erred in determining that claim 39
is anticipated by the Kennedy reference because Kennedy does not teach
“cable through-holes having rounded edges at a lower and upper surface,” as
required by claim 39. Appeal Br. 30. The Examiner finds, based on Figure
20 of Kennedy, that “the edges of wire hole 2 are rounded at the passage 4.”
Ans. 8, 30. Appellant argues that Figure 20 only depicts the upper surface of
the spacer plate, and that Kennedy thus does not teach rounded edges at both
an upper and lower surface. Appeal Br. 31. We are persuaded by
Appellant’s argument.
Appellant is correct in asserting that Figure 20 of Kennedy only
depicts the upper surface of a spacer plate. The Examiner cites no evidence
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that the lower surface of this spacer plate also contains rounded edges of the
type required by claim 39. Thus, we do not sustain the Examiner’s rejection
of claim 39 as anticipated by Kennedy.
Claims 40 and 41
Claims 40 and 41 depend from claim 39, and therefore require cable
through-holes having rounded edges at both an upper surface and a lower
surface. Thus, we also do not sustain the Examiner’s rejection of claims 40
and 41 as anticipated by Kennedy.

Rejection of Claim 24 as Obvious and Unpatentable
over Kinoshita in view of admitted prior art
Claim 24 depends from claim 22, which, in turn, depends from claim
21. As discussed above, we do not sustain the Examiner’s rejection of claim
21 as anticipated by Kinoshita because the Examiner’s findings are not
supported by sufficient record evidence.
The Examiner’s rejection of claim 24 relies on the Examiner’s finding
that Kinoshita teaches all limitations of claim 21. The Examiner does not
find that any other prior art reference teaches any of the limitations of claim
21. Thus, we also do not sustain the Examiner’s rejection of claim 24 as
obvious and unpatentable over Kinoshita in view of admitted prior art.

Rejection of Claim 27 as Obvious and
Unpatentable over Kirkegaard
Claim 27 depends from claim 21, and thus incorporates the
requirement for “a suspension device attached to the nacelle and led through
the suspension holes.” Appeal Brief 39. Claim 27 further requires that the
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suspension device be “rod-like.” Id. Appellant argues that the Examiner
erred in determining that claim 27 is obvious and unpatentable over
Kirkegaard because, inter alia, the Examiner fails to set forth a sufficient
rationale for modifying the structure of Kirkegaard that is found to meet the
“suspension device” claim limitation so as to include a rigid rod in place of
wire 7. Id. at 34–35. The Examiner’s stated rationale for making this
modification is that it would reduce twisting and movement of the cable
wires. Ans. 32. Appellant’s argument is persuasive.
As discussed above, the Examiner asserts that cable suspension 5 and
wire 7 of Kirkegaard together meet the “suspension device” limitation of
claim 21. The cables that pass through cable suspension 5—and which are
also attached to the nacelle—extend downward around the vertical axis of
the tower, and are attached to the outer wall of the tower (which does not
rotate) by fastening device 10. Id. at 7:30–33. Thus, whenever the nacelle
rotates in the horizontal plane, the cables attached to the nacelle necessarily
twist about the vertical axis of the tower. Replacing wire 7 with a rigid rod
would not change this. If the nacelle of Kirkegaard rotates 180 degrees in
the clockwise direction, the cables within the tower—which are attached to
both the rotating nacelle and the fixed wall of the tower—would necessarily
twist 180 degrees about the vertical axis of the tower regardless of whether
the spacing plates are attached to cable suspension 5 via a wire or a rigid
rod. For the foregoing reasons, we determine that the Examiner has failed to
articulate a rational underpinning to support the legal conclusion of
obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citation omitted). Thus, we do not sustain the Examiner’s rejection of claim
27 as obvious and unpatentable over Kirkegaard.
Appeal 2012-007497
Application 12/528,504

21

Rejection of Claim 31 as Obvious and
Unpatentable over Kinoshita in view of Kennedy
Claim 31 depends from claim 21. As discussed above, we do not
sustain the Examiner’s rejection of claim 21 as anticipated by Kinoshita
because the Examiner’s findings are not supported by sufficient record
evidence.
The Examiner’s rejection of claim 31 relies on the Examiner’s finding
that Kinoshita teaches all limitations of claim 21. The Examiner does not
find that any other prior art references teach any of the limitations of claim
21. Thus, we also do not sustain the Examiner’s rejection of claim 31 as
obvious and unpatentable over Kinoshita in view of Kennedy.

Rejection of Claim 42 as Obvious
and Unpatentable over Kennedy
Claim 42 depends from claim 40, which, in turn, depends from
independent claim 39. Appeal Br. 41. The Examiner’s rejection of claim 42
relies on the Examiner’s finding that Kennedy teaches all limitations of
claim 39. For the reasons discussed above, we are persuaded by Appellant’s
argument that Kennedy does not teach all limitations of claim 39. Thus, we
do not sustain the Examiner’s rejection of claim 42 as unpatentable over
Kennedy.

Appeal 2012-007497
Application 12/528,504

22
DECISION
For the foregoing reasons, we AFFIRM the Examiner’s decision to
reject claims 21, 22, 25, 26, 28–30, 32, and 35–38. We REVERSE the
Examiner’s decision to reject claims 23, 24, 27, 31, and 39–42.
No time period for taking action in connection with this appeal may
be extended under 37 C.F.R. § 1.135(a)(1)(iv)(2010).

AFFIRMED-IN-PART

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