LM WP PATENT HOLDING A/S

Patent Trials and Appeals Board

Mar 22, 2022

2021002155 (P.T.A.B. Mar. 22, 2022)

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. 15/523,268 04/28/2017 Steven Hauge PEDERSEN 35206U 2977 20529 7590 03/22/2022 NATH, GOLDBERG & MEYER Joshua Goldberg 112 South West Street Alexandria, VA 22314 EXAMINER SPARKS, RUSSELL E ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): USPTO@nathlaw.com jgoldberg@nathlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN HAUGE PEDERSEN and KIM ANSHOLM RASMUSSEN ____________ Appeal 2021-002155 Application 15/523,268 Technology Center 1700 ____________ Before KAREN M. HASTINGS, N. WHITNEY WILSON, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-4, 6-16, 18, and 19. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “LM WP PATENT HOLDING A/S” as the real party in interest (Appeal Br. 3). Appeal 2021-002155 Application 15/523,268 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal (emphasis added to highlight key disputed limitations): 1. A shear web mould system for manufacturing a wind turbine component in form of an I-shaped shear web having a web body and a first web foot flange at a first end of the web body and a second web foot flange at a second end of the web body, wherein the system comprises: a lower mould part comprising: a central moulding portion for forming at least a part of the web body; a first moulding plate for forming at least a part of the first web foot flange; and a second moulding plate for forming at least a part of the second web foot flange, wherein the angles of the first moulding plate and the second moulding plate relative to the central moulding portion are adjustable; and an upper mould part comprising: a central portion; a first side portion for forming an inner part of the first web foot flange; and a second side portion for forming an inner part of the second web foot flange. (Appeal Br. Claims App. 14). Appeal 2021-002155 Application 15/523,268 3 REFERENCES The Examiner relied upon the following prior art: Name Reference Date Kondo US 2008/0072527 A1 Mar. 27, 2008 Krogager US 2009/0025448 A1 Jan. 29, 2009 Thaden US 2012/0061871 A1 Mar. 15, 2012 Artweger FR 2339472 Jan. 28, 1977 Opulent Heat-resistant release film, Mitsui Chemicals Tohcello, Inc., https://web.archive. org/web/20111120064252/https ://www. mc-tohcello. co.jp/english/product/industry /tpx. html 2011 REJECTIONS ON APPEAL Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 7-16, 18, 19 103 Kondo, Krogager 3 103 Kondo, Krogager, Thaden 4 103 Kondo, Krogager, Artweger 6 103 Kondo, Krogager, Opulent Appeal 2021-002155 Application 15/523,268 4 OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejection (see generally Ans.). In re Jung, 637 F.3d 1356, 1365- 66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection). We sustain the rejection essentially for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s main argument focuses on the assertion that there is no motivation to modify Kondos’ I-shaped beam mold system based on Krogager’s teachings of adjustable mold flange portions for a C-shaped element (Appeal Br. 10), mainly because Kondo’s two dies are rigidly connected to one another (id.). Appellant further argues that the Examiner’s proposed modification of Kondo renders it unsatisfactory since the dies of Kondo “would no longer properly fit together” (Appeal Br. 11). Finally, Appellant argues that Krogager’s teaching of adjustability is limited to Appeal 2021-002155 Application 15/523,268 5 occurring during heating and curing, and would not allow manufacture of different angled web foot flanges (id.). Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claim language, the applied prior art as a whole, and the inferences that one of ordinary skill would have made, as aptly explained by the Examiner (Ans. 3-6). We note that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of [those] references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). One of ordinary skill in the art would have readily appreciated from the applied prior art as a whole that adjustable versus fixed flange portions in a mold may be beneficial as taught in Krogager for a mold as exemplified in Kondo. Appellant has not sufficiently explained why one of ordinary skill in the art would not have been capable, using no more than ordinary creativity, of modifying Kondo’s system to have such adjustability as taught in Krogager. Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Thus, Appellant has not shown reversible error in the Examiner’s determination that one of ordinary skill would have expected the Appeal 2021-002155 Application 15/523,268 6 adjustability as taught in Krogager to be useful for Kondo’s mold so as to result in the claimed system of independent claim 1 (e.g., Ans. 5, 11). See also In re Stevens, 212 F.2d 197 (CCPA 1954) (It was held that adjustability, where needed, is not a patentable advance, and because there was an art- recognized need for adjustment in a fishing rod, the substitution of a universal joint for the single pivot of the prior art would have been obvious). With respect to Appellant’s final argument, the Examiner counters that there is nothing in the claim requiring adjustability sufficient for manufacturing parts having varied flange angles (Ans. 11). Indeed, the claim does not require any minimal or maximum amount of adjustability of the first and second mold plates relative to the central portion. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore, the Supreme Court has stated that it is error to “look only to the problem the patentee [or applicant] was trying to solve.” KSR, 550 U.S. at 420; see also, In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventors.”); also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Any additional arguments made by the Appellant, but not explicitly discussed in this decision, have been fully addressed by the Examiner and are unpersuasive of reversible error for the reasons explained in the Final Office Action and/or the Answer. Appellant does not present any additional arguments for any of the dependent claims. Accordingly, we sustain the Examiner’s rejection on appeal. Appeal 2021-002155 Application 15/523,268 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7-16, 18, 19 103 Kondo, Krogager 1, 2, 7-16, 18, 19 3 103 Kondo, Krogager, Thaden 3 4 103 Kondo, Krogager, Artweger 4 6 103 Kondo, Krogager, Opulent 6 Overall Outcome 1-4, 6-16, 18, 19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED