Siemens Gamesa Renewable Energy A/S

Patent Trials and Appeals Board

Jul 9, 2020

14138020 - (D) (P.T.A.B. Jul. 9, 2020)

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.
14/138,020 12/21/2013 Peter Kybelund 2012P07448US (023) 5976
96537 7590 07/09/2020
BEUSSE WOLTER SANKS & MAIRE
Mail Stop AG
390 N. ORANGE AVE, SUITE 2500
ORLANDO, FL 32801
EXAMINER
DOUYON, LORNA M
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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@dockettrak.com
USPTO@patentorlando.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte PETER KYBELUND,
SIMON KWIATKOWSKI PEDERSEN, and
ANDERS HASLUND THOMSEN
____________
Appeal 2019-005032
Application 14/138,020
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 14, and 16–22 of Application
14/138,020. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/138,020 (“the ’020 Application”) filed Dec. 21, 2013; the Final Office
Action dated Sept. 27, 2018 (“Final Act.”); the Appeal Brief filed Feb. 1,
2019 (“Appeal Br.”); the Examiner’s Answer dated Apr. 19, 2019 (“Ans.”);
and the Reply Brief filed June 16, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Siemens Aktiengesellschaft as the real
party in interest. Appeal Br. 1.
Appeal 2019-005032
Application 14/138,020
2
STATEMENT OF THE CASE
The ’020 Application describes the production of composite
components by means of a resin transfer molding process. Spec. 1:9–10.
More specifically, the ’020 Application describes a flow medium for
assisting a resin to be transferred into a mold. Id. at 1:11–12.
Claims 1 and 16, representative of the ’020 Application’s claims, are
reproduced below from the Claims Appendix of the Appeal Brief.
1. A flow medium comprising a degradable material
configured for assisting a resin to be transferred into a mold
accommodating a layered structure of reinforced material,
wherein the flow medium comprises a composition selected
such that when the resin is cured in the presence of the flow
medium, the flow medium degrades and becomes incorporated
within a final composite component comprising the reinforced
material embedded within the transferred and cured resin,
wherein the flow medium further comprises adhesiveness with
respect to the reinforced material.
16. A flow medium, comprising:
a degradable material configured as a mesh structure
effective to assist a resin transfer into a mold containing the
flow medium and a reinforcement material;
wherein the flow medium further comprises an
adhesiveness with respect to the reinforcement material; and
wherein the degradable material comprises a composition
such that, when the resin is cured within the mold in the
presence of the degradable material, the degradable material
degrades to lose its mesh structure and to become incorporated
within the resin.
Appeal 2019-005032
Application 14/138,020
3
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Davis US 3,862,287 Jan. 21, 1975
Pollet et al.
(“Pollet”) US 5,026,410 June 25, 1991
Slaughter et al.
(“Slaughter”) US 2003/0025232 A1 Feb. 6, 2003
Wood EP 0375187 A1 June 27, 1990
REJECTIONS
On appeal, the Examiner maintains the following rejections:3
1. Claims 1–3, 6, 16, and 19 under 35 U.S.C. § 102(b) as
anticipated by or under 35 U.S.C. § 103(a) as obvious
over Slaughter. Final Act. 2–4.
2. Claims 4, 5, 17, 18, and, alternatively, claim 6, under 35 U.S.C.
§ 103(a) as obvious over Slaughter, and further in view of
Davis, as evidenced by Wood. Final Act. 4–5.
3. Claims 14 and 20–22 under 35 U.S.C. § 103(a) as obvious over
Slaughter in view of Davis, as evidenced by Wood, and further
in view of Pollet. Final Act. 5.

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statutes.
Appeal 2019-005032
Application 14/138,020
4
DISCUSSION
Rejection 1: Claims 1–3, 6, 16, and 19 as anticipated by or obvious
over Slaughter
a) § 102(b)
The Examiner rejects claims 1–3, 6, 16, and 19 as anticipated by
Slaughter. Final Act. 2–4.
Anticipation is a question of fact. In re Suitco Surface, Inc., 603 F.3d
1255, 1259 (Fed. Cir. 2010). To serve as an anticipatory reference, “the
reference must disclose each and every element of the claimed invention,
whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009).
Appellant argues for patentability based on limitations recited in
independent claims 1 and 16. See Appeal Br. 3–4; Reply Br. 2–3.
Slaughter’s Figure 2 is reproduced below:

Figure 2 is an exploded perspective view of an apparatus for forming
composite parts. Slaughter ¶ 30. Figure 2 shows, inter alia, resin
Appeal 2019-005032
Application 14/138,020
5
containment layer 24, which insures that the resin distribution medium 22 is
substantially filled with resin prior to the resin entering layup 16. Id. ¶ 38.
The Examiner finds Slaughter describes an embodiment in which
resin containment layer 24 is a sheet of adhesive 24A having a melting point
lower than the curing temperature of the resin used to impregnate lay-up 16.
Ans. 7. The Examiner finds Slaughter describes that a suitable sheet of
adhesive 24A is a low temperature melting resin 36, which is applied to a
porous non-woven polyester veil material 37. Id.
The Examiner finds that Slaughter’s porous non-woven polyester veil
material 37 corresponds to the claimed “degradable material” and “mesh
structure,” which are each required features of the claimed “flow medium.”
Id.; Appeal Br. 8, 9 (Claims App.).
The Examiner finds Slaughter describes curing the contained resin by
heat causes resin containment layer 24A to melt, which allows the resin to
flow through to lay-up 16. Ans. 7. Thus, the Examiner finds that
Slaughter’s resin containment layer 24A corresponds to the claimed “flow
medium” as recited in the instant claims. Id.
Appellant, however, distinguishes Slaughter’s resin containment layer
24A from the subject matter of claims 1 and 16, because adhesive 24A is
used to contain flow. Appeal Br. 4. Appellant particularly argues that
Slaughter’s resin containment layer 24A “is by necessity non-porous and
cannot function as a flow medium.” Reply Br. 2. Appellant contends that,
even though Slaughter’s resin containment layer 24A allows resin flow after
melting and degrading of the adhesive, layer 24A “is not functioning as a
flow medium.” Id.
In our view, Appellant implicitly argues that the preamble’s recitation
of “a flow medium” is limiting. Id. The Examiner’s findings, on the other
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Application 14/138,020
6
hand, do not give the term “flow medium” in the preamble patentable
weight. See generally Final Act. 2–4; Ans. 6–7. According to the
Examiner, mere melting of Slaughter’s resin containment layer 24A is
sufficient to describe the claimed “flow medium” recited in the instant
claims. Final Act. 3–4.
In general, the preamble limits a claim if it recites essential structure,
essential steps, or is otherwise “necessary to give life, meaning, and vitality”
to the claim, Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA
1951)), while the preamble is not limiting when the claim body defines a
structurally complete invention and the preamble states only a purpose or
intended use, Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The default
presumption is that a claim’s preamble is not limiting. Am. Med. Sys., Inc. v.
Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (“‘Generally,’ we have
said, ‘the preamble does not limit the claims.”’ (quoting Allen Eng’g Corp.
v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))).
In this case, we conclude that the preamble of claim 1 is limiting.
Claim 1 reads “[a] flow medium comprising a degradable material
configured for assisting a resin to be transferred into a mold . . .” (emphasis
added). Appeal Br. 8 (Claims App.). Claim 16 reads “[a] flow medium,
comprising: a degradable material configured as a mesh structure effective
to assist a resin transfer into a mold . . .” (emphasis added). Id. at 9. We
conclude that this language is limiting for several reasons. First, the
preamble is necessary to give proper antecedent basis to the references to
“the flow medium” in the body of claims 1 and 16. Second, the preamble
must be limiting to give life meaning and vitality to these claims. The
default presumption that a preamble is not limiting is consistent with the
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Application 14/138,020
7
obligation to give a claim its broadest reasonable interpretation during
prosecution. However, once an applicant explicitly indicates the intent that
the preamble of a claim be given limiting effect, the claim should be
construed in this manner and the Examiner should indicate in the written
record that the preamble has been given limiting effect.
Along with Appellant’s arguments in the Briefs, the ’020 Application
explicitly indicates Appellant’s intention that the claimed “flow medium” is
given limiting effect. See, e.g., Spec. ¶ 10 (describing “that the flow
medium becomes a part of the final composite component [in a mold] . . . if
the flow medium is made from a material which can be degraded and/or
dissolved by the resin”); id. ¶ 11 (describing that “the flow medium []formed
as a mesh structure . . . provide[s] the advantage that the flow medium can
easily be inserted within the layered structure of reinforced material” within
a mold). The Examiner’s failure to indicate in the written record that the
preamble “a flow medium” has been given limiting effect results in a claim
interpretation that is unreasonably broad.
Appellant persuasively shows the Examiner reversibly erred in finding
claims 1 and 16 as anticipated by Slaughter; we do not sustain the rejection.
For the same reasons, we do not sustain the rejection of claims 2, 3, 6, which
depend from claim 1; and claim 19, which depends from claim 16, as
anticipated by Slaughter.
b) § 103(a)
The Examiner rejects claims 1–3, 6, 16, and 19 as obvious over
Slaughter. Final Act. 2–4. However, as discussed above, Slaughter does not
disclose or suggest the claimed “flow medium” recited in claims 1 and 16.
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Application 14/138,020
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For the same reasons as in the anticipation rejection, we do not sustain the
Examiner’s rejection claims 1–3, 6, 16, and 19 as obvious over Slaughter.
Rejection 2: Obviousness of claims 4, 5, 17, 18, and, alternatively,
claim 6 over Slaughter, Davis, and Wood
The additional Davis reference, with evidence from Wood, relied on
by the Examiner in rejecting claims 4, 5, and/or 6, dependent from claim 1,
and claims 17 and 18, dependent from claim 16, does not cure the
deficiencies in Slaughter discussed above. Therefore, we do not sustain the
rejection of claims 4, 5, 17, 18, and, alternatively, claim 6 under 35 U.S.C.
§ 103(a) over the cited references.
Rejection 3: Obviousness of claims 14 and 20–22 over Slaughter,
Davis, Wood, and Pollet
The additional Pollet reference relied on by the Examiner in rejecting
claims 14 and 22, dependent from claim 1, and claims 20 and 21, dependent
from claim 16, does not cure the deficiencies in the combination of
Slaughter, Davis, and Wood discussed above. Therefore, we do not sustain
the rejection of claims 14 and 20–22 under 35 U.S.C. § 103(a) over the cited
references.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 16,
19 102(b), 103(a) Slaughter 1–3, 6, 16, 19
4–6, 17, 18 103(a) Slaughter, Davis, Wood 4–6, 17, 18
Appeal 2019-005032
Application 14/138,020
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 20–22 103(a) Slaughter, Davis, Wood, Pollet 14, 20–22
Overall
Outcome
1–6, 14, 16–
22
REVERSED