Ex Parte Thrue et al

Patent Trial and Appeal Board

Mar 20, 2018

13283884 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/283,884 10/28/2011
22116 7590 03/22/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Carsten Thrue
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.
2011P22983US 1023
EXAMINER
VERDIER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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 CARSTEN THRUE,
JENS J0RGEN 0STERGAARD KRISTENSEN, KIM TANGAGER,
and CHAD LAMBORN
Appeal2017-001688
Application 13/283,8841
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-7 and 10.2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Siemens Wind Power
A/S. Appeal Br. 3.
2 Claims 8 and 9 were cancelled in an Amendment filed November 7, 2011.
Claims 11-14 were indicated as allowable by the Examiner in the Final
Action dated December 31, 2015.
Appeal2017-001688
Application 13/283,884
CLAIMED SUBJECT MATTER
The claims are directed to "a blade of a wind turbine, which
comprises a vortex generator." Spec. ,-i 1. Claim 1 is the sole independent
claim on appeal. Claim 1 reproduced below, is representative of the claimed
subject matter:
1. A blade of a wind turbine, comprising:
a vortex-generator configured to contribute to
aerodynamic characteristics of the blade; and
a recess at least partly arranged and at least partly
embedded in a layer of paint of a blade-surface, the recess
configured to receive at least a part of the vortex-generator,
wherein the vortex generator is fixed in the recess,
wherein the recess is established by a former plate, which
is arranged on the surface of the blade before the blade-surface
is painted and the recess is established by removing the former
plate after the painting is finished.
REJECTIONS
The Examiner made the following rejections:
I. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haag (US 2009/0087314 Al, published Apr. 2, 2009) and
Miller (US 2010/0270433 Al, published Oct. 28, 2010).
II. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haag, Miller, and Hong (US 2012/0163981 Al, published
June 28, 2012).
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Application 13/283,884
OPINION
Rejection I-The rejection of claims 1-7 under
35 U.S.C. § 103(a) over Haag and Miller
Claim 1
The Examiner finds that Haag teaches a turbine having a blade 5 and a
vortex generator 10. Final Act. 8. The Examiner also finds that the blade of
Haag may be painted before or after the vortex generator is mounted on the
blade 5. Id. at 9. Miller is relied upon to teach painting the blade surface.
Id. at 9-10. Further, the Examiner determines that the recited limitation of a
"recess is established by a former plate, which is arranged on the surface of
the blade before the blade-surface is painted and the recess is established by
removing the former plate after the painting is finished ... [is a] product-by-
process limitation[]." Id. at 10-11. This leads the Examiner to conclude
that Appellants' claim is a product-by-process claim and thus is obvious
from the prior art. Id. at 8-11.
Appellants argue that Haag and Miller, alone or in combination, do
not teach or suggest 1) "a recess at least partly arranged and at least partly
embedded in a layer of paint of a blade-surface, and configured to receive at
least a part of the vortex-generator" and 2) "a vortex-generator fixed in the
recess of the blade surface." Appeal Br. 7; Reply Br. 4. Appellants contend
that the Examiner's "product-by-process remarks ... fail[] to identify the
claimed product resulting from the process" in that the limitations requiring
that "the recess be[] established by a former plate[] which is arranged on the
surface of the blade before the blade-surface is painted, and the recess is
established by removing the former plate after the painting is finished has
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Application 13/283,884
been ignored, and not properly considered." Appeal Br. 11 (emphasis
omitted).
The Examiner responds that "[t]he patentability of a product does not
depend on its method of production. If the product in the product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process." Ans. 13.
"A product-by-process claim is 'one in which the product is defined at
least in part in terms of the method or process by which it is made."'
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir.
2006) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 158 (1989)). "The purpose of product-by-process claims is to allow
inventors to claim 'an otherwise patentable product that resists definition by
other than the process by which it is made."' Id. at 1315 (quoting In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Such claims are still directed
to the ultimate product, not the underlying process. See id. at 1317
("Regardless of how broadly or narrowly one construes a product-by-process
claim, it is clear that such claims are always to a product, not a process.").
"Once a product is fully disclosed in the art, future claims to that same
product are precluded, even if that product is claimed as made by a new
process." SmithKline, 439 F.3d at 1315. Thus, "[i]f the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process." Thorpe, 777 F.3d at 697. In other words, "[t]he
patentability of a product does not depend on its method of production."
SmithKline, 439 F.3d at 1317.
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Appeal2017-001688
Application 13/283,884
Claim 1 requires a vortex generator, a recess at least partly embedded
in a layer of paint, and the vortex generator being fixed in the recess. Claim
1 includes a process limitation directed to how the recess is formed. In the
Examiner's rejection, Haag is relied upon to teach the vortex generator
attached to the blade of a turbine with Miller teaching that an aerodynamic
structure may be painted. Thus, we understand the Examiner's position to
be that the vortex generator is fixed within a recess is created when the paint
is applied to the blade. See Miller ,-i 43.
"Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product." In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (citations
omitted). Appellants' argue that "the Examiner [failed] to consider the
remaining features recited in claim 1 ... as all features must be considered."
Appeal Br. 11 (emphasis omitted). In the Final action, the Examiner
specifically addressed the limitations as a product-by-process limitation. See
Final Act. 10-11 ("Concerning the limitations that the recess is established
by a former plate, which is arranged on the surface of the blade before the
blade-surface is painted and the recess is established by removing the former
plate after the painting is finished ... these are product-by-process
limitations."). Moreover, the Examiner further explains in the Answer that
Miller is merely relied upon to teach applying a layer of paint to
the blade of Haag, for the purpose of aiding in the attaching of
the vortex generator to the blade, while providing color in the
form of paint to the blade. That is, when the teachings of Miller
are followed by applying a layer of paint to the blade and vortex
generator arrangement of Haag, the resulting product is a recess
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Application 13/283,884
at least partly arranged and at least partly embedded in the layer
of paint of the blade-surface 13, the recess configured to receive
at least a part of the vortex-generator 10.
Ans. 14. The Examiner has addressed this claim limitation. Accordingly,
Appellants' argument is unconvincing.
Appellants contend that "Haag fails to teach or suggest: a recess at
least partly arranged and at least partly embedded in a layer of paint."
Appeal Br. 7 (emphasis omitted). We disagree. As discussed above, the
combination of Haag and Miller teaches a recess that is at least partly
arranged and at least partly embedded in a layer of paint. Moreover,
Appellants are attacking Haag individually and nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants argue that the Examiner "ignores Haag's concerns with
attaching vortex-generators directly to the blade, and effectively eliminates
the base 11 and strip 10 of Haag in order[] to secure the vortex-generators to
the blade, via a recess." Appeal Br. 7-8 (emphasis omitted). The Examiner
responds stating "Haag discloses that the strip 11 remains glued to the blade
surface 13 of the wind turbine blade 5. The rejection at hand does not
contain any statement that in Haag, the base 11 and strip 10 of the vortex
generators is effectively eliminated, as Appellant[s] ha[ve] argued." Ans. 4;
see also Final Act. 8 ("The vortex-generator comprises a platform 11. ").
Appellants' argument is, thus, misplaced with respect to the Examiner's
rejection because the Examiner is not proposing to attach the fin 15 directly
to the blade. Rather, the rejection proposes using Haag's base 11 to connect
the vortex generator to the blades. See id. at 8-11.
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Appellants argue that Miller does not disclose vortex generators or a
recess. Appeal Br. 8. Although Appellants are correct, this is not indicative
of error because, Appellants are again attacking the references individually
without consideration of the combination of Haag and Miller. As stated
above, nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See Merck, 800 F.2d. at 1097.
Appellants also argue that there is no motivation to make the proposed
modification because Miller teaches nano-effectors, Miller utilizes nano-
effectors to create "a reduction in drag [that] does not result from vortex
generators," and "the Examiner has failed to identify how nano-effectors are
the same as vortex generators." Appeal Br. 8 (emphasis omitted.).
However, as discussed supra, the rejection does not propose modifying
Haag to use Miller's nano-effectors. See Final Act. 10. Accordingly,
Appellants' arguments are inapposite. Miller is relied upon for its teaching
of painting an aerodynamic structure as stated by the Examiner. See Ans. 7
("Again, only the base reference to Haag is being modified by providing the
layer of paint, as taught by Miller. None of the structure of Miller is being
incorporated into the base reference to Haag."). Appellants do not address
the Examiner's articulated reasons for the proposed modification.
Accordingly, Appellants' arguments do not apprise us of error in the
Examiner's the rejection.
Appellants also argue that there is no motivation to combine both
Haag and Miller because they each teach away from the claimed invention.
Appeal Br. 9-10. Appellants' argument is unconvincing because "teaching
away" requires that the reference "criticize, discredit, or otherwise
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discourage" the use of other alternatives. See In re Fulton, 391F.3d1195,
1201 (Fed. Cir. 2004). We will not read into a reference a teaching away
from a proposed combination when no such language exists. See Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006). Appellants argue that Miller teaches away
from using vortex generators because of increased drag, and Haag teaches
away from fixing vortex-generators because of the potential for them tearing
away from the blade surface at high air speeds. Appeal Br. 10. Neither of
these observations identifies a teaching away from the modification
proposed in the rejection, namely, applying paint to the aerodynamic
structure (i.e., blade) of Haag as taught by Miller. Thus, Appellants do not
show that Haag or Miller teach away from the invention.
Appellants argue that the Examiner has used impermissible hindsight.
Appeal Br. 10. However, Appellants do not identify, nor do we discern, any
knowledge that the Examiner relied upon that was gleaned from Appellants'
disclosure and that was not, otherwise, within the level of ordinary skill at
the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395
( CCP A 1971) (so long as a conclusion of obviousness is based on a
reconstruction that "takes into account only knowledge which was within the
level of ordinary skill at the time the claimed invention was made and does
not include knowledge gleaned only from [Appellants'] disclosure, such a
reconstruction is proper"). Accordingly, Appellants' argument regarding
hindsight is not persuasive.
For these reasons, we sustain the rejection of claim 1.
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Application 13/283,884
Claims 2-7
Claims 2-7 depend from claim 1. Appeal. Br. 14-15 (Claims App.).
Appellants do not separately contest the rejection of claims 2-7. Id. at 12.
Rather, Appellants rely upon the dependency from claim 1. Id. We find no
deficiencies in the Examiner's rejection of independent claim 1 as obvious
over Haag and Miller. Accordingly, for the same reasons discussed supra
for claim 1, we sustain the Examiner's decision rejecting claims 2-7.
Rejection II - The rejection of claim 10 under
35 U.S.C. § 103(a) over Haag, Miller, and Nakagawa
Claim 10 depends from claim 1. Appeal. Br. 15 (Claims App.).
Appellants do not separately contest the rejection of claim 10. Id. at 12.
Rather, Appellants rely upon the dependency from claim 1. Id. We find no
deficiencies in the Examiner's rejection of independent claim 1 as obvious
over Haag and Miller. Accordingly, for the same reasons discussed supra
for claim 1, we sustain the Examiner's decision rejecting claim 10.
DECISION
The Examiner's decision to reject claims 1-7 and 10 under 35 U.S.C.
§ 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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