Earley, Matthew

Patent Trials and Appeals Board

Nov 14, 2019

12925235 - (D) (P.T.A.B. Nov. 14, 2019)

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.
12/925,235 10/18/2010 Matthew Earley 2522
7590 11/14/2019
Matthew Earley
3226 Atlantic Ave
PO Box 213
Allenwood, NJ 08720
EXAMINER
CUEVAS, PEDRO J
ART UNIT PAPER NUMBER
2831
MAIL DATE DELIVERY MODE
11/14/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW EARLEY

Appeal 2019-000815
Application 12/925,235
Technology Center 2800
____________

Before ROMULO H. DELMENDO, RAE LYNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Primary Examiner’s final decision to reject claims 26–29.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Inventor, Matthew Earley, is the Applicant and also
the real party in interest (Appeal Brief filed February 8, 2018 (“Appeal Br.”)
at 3).
2 See Appeal Br. 4–11; Reply Brief filed November 5, 2018 (“Reply Br.”) at
1–12; Final Office Action entered January 6, 2017 (“Final Act.”) at 8–10;
Examiner’s Answer entered October 3, 2018 (“Ans.”) at 3–17.
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I. BACKGROUND
The subject matter on appeal relates to a fixed pitch wind turbine with
centrifugal weight control (CWC) (original Specification filed October 18,
2010 (“Spec.”) at 1, l. 6). The Specification explains that, in the prior art,
the operating speed for wind turbines is typically up to 25 m/s but the rated
power is typically reached at 14 or 15 m/s (id. at 1, ll. 18–19). Thus,
“[c]urrent technology captures and transforms less than half of the energy
content available” (id. at 1, ll. 16–17). According to the Specification,
“fixed pitch rotor and centrifugal weight control will permit the generation
of increasing amounts of energy for the full distribution of operating speeds
in both wind and water scenarios” (id. at 1, ll. 14–16).
Figure 1, which illustrates an exemplary embodiment of a fixed pitch
wind turbine with CWC (Spec. 1, l. 27), is reproduced from the Drawings
filed October 18, 2010, as follows:
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Figure 1 above depicts a fixed wind turbine, which uses a CWC as disclosed
in the Appellant’s earlier patent, Earley,3 the principal prior art reference
applied in the rejection on appeal (id. at 2, ll. 2–3). In addition to permitting
the generation of increasing amounts of energy for the full distribution of
operating speeds when used with a fixed pitch rotor, as we discussed above,
the Specification states that “[e]mploying CWC (in lieu of pitch or stall
solutions) in conjunction with induction generator torque, enables on

3 US 6,949,842 B2, issued September 27, 2005.
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demand control of necessary amounts of opposing torque to manage rotor
speed in gusty and increasing wind speeds through cut-out . . . typically 25
meters per second” (id. at 2, ll. 24–27).
Representative claim 26 is reproduced from the Claims Appendix to
the Appeal Brief, as follows:
26. A wind turbine for the production of increasing amounts
of energy in increasing wind speeds up to cut-out at 25 m/s
[c]omprising:
a supporting framework including: an elevated platform
for the swiveling movement about a vertical axis; a supporting
tower;
a rotor with fixed pitch blades;
a horizontal low speed shaft that couples to said rotor for
rotation with said rotor;
a right angle gearbox that journals said horizontal shaft to
input of said right angle gearbox;
an extended vertical shaft that journals to output side of
said right angle gearbox;
a centrifugal weight control apparatus that drivingly
connects to said extended vertical shaft at base of tower;
a multi-geared transmission having a low speed input
connected to said extended vertical shaft;
a high speed output of said multi-geared transmission;
a clutch that journals to said high speed output and;
an induction generator that operatively connects to said
clutch for rotation at desired speeds.
(Appeal Br. 12 (emphases and indentations added)).

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II. REJECTION ON APPEAL
Claims 26–29 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Earley, Carter,4 and Simon5 (Ans. 3–17; Final Act. 8–
12).6
III. DISCUSSION
1. Grouping of Claims
Unless separately argued within the meaning of 37 C.F.R.
§ 41.37(c)(1)(iv), the rejected claims stand or fall with claim 26, which we
select as representative pursuant to the rule.
2. The Examiner’s Position
The Examiner finds that Earley describes an apparatus having most of
the structural limitations recited in claim 26 but acknowledges several
differences between the prior art and the claimed subject matter (Final Act.
8–9). Specifically, the Examiner finds that Earley does not disclose: (1) an
extended vertical shaft; (2) a gearbox with a multi-geared transmission; and
(3) an induction-type generator (id. at 9). Relying on Carter and Simon,
however, the Examiner concludes that these differences would have been
obvious to a person having ordinary skill in the art (id. at 9–10). Regarding
difference (1), the Examiner concludes that “[i]t would have been obvious to
one skilled in the art at the time the invention was made to use the extended
vertical shaft disclosed by Carter on the supporting tower disclosed by

4 US 3,942,026, issued March 2, 1976.
5 US 2010/0207396 A1, published August 19, 2010.
6 All other rejections as set forth in the Final Action have been withdrawn
(Ans. 3; Final Act. 5–7).
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Earley for the purpose of providing mechanical power to a generator located
at the base of a tower” (id. at 10). Regarding differences (2) and (3), the
Examiner concludes:
It would have also been obvious to one skilled in the art at
the time the invention was made to use the multi-speed
transmission (in lieu of the multi-geared transmission disclosed
by Earley) and an induction generator (in lieu of the generator
disclosed by Earley or the generator disclosed by Carter)
disclosed by Simon on the wind turbine disclosed by Earley for
the purpose of providing multiple high-speed outputs instead of
a single high-speed output from the transmission and providing
“a cost-effective machine for converting the rotational energy to
electricity” (see paragraph [0026] of Simon).
(Id.)
Regarding claim 26’s preamble limitation, the Examiner finds that the
recitation “‘for the production of increasing amounts of energy in increasing
wind speeds up to cut-out at 25 m/s’ merely recites an ‘intended use’ of a
wind turbine within a range of naturally occurring wind speeds with the
listed structural elements, elements which are found in the applied prior art”
(Ans. 5). The Examiner explains that the functional limitation recited in the
preamble has not been shown to result in a structural difference that
distinguishes the claimed wind turbine over the wind turbine suggested by
the prior art references (id. at 6–7). Relying on extrinsic documentary
evidence, the Examiner further states that “worldwide mean wind speeds do
not even reach 10 m/s, regardless of location” (id. at 8).
3. The Appellant’s Contentions
The Appellant contends that claim 26’s preamble recites a functional
limitation that distinguishes the claimed invention over the prior art (Appeal
Br. 4). According to the Appellant, “[c]urrent technology generates
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increasing amounts of energy from start up to 15 m/s and continues
operation at rated power up to a cut-out speed of 25 m/s” but “[t]he energy
production curves for all HAWT’s (horizontal axis wind turbine) go
perfectly flat in the range from 15 m/s through 24 m/s and cut-out occurs at
25 m/s” (id. at 5). The Appellant argues that, by contrast, “[t]he claimed
invention generates increasing amounts of energy from start up through 24
m/s and also cuts out at 25 m/s” and that “[t]he examiner errors [sic] when
he does not accept the fact that increasing amounts of energy can be
generated in the range of 15 to 24 m/s by the claimed invention” (id. at 6).
Furthermore, the Appellant argues that the Examiner articulates an assembly
of the claimed invention from elements found in the prior art references
without providing any suggestion or motivation to do so (id. at 7). The
Appellant also alleges that the claimed invention provides unexpected results
(id. at 8).
Regarding dependent claim 29, the Appellant argues that an
Examiner’s statement that Earley discloses excitation of an induction
generator “is completely false” (Appeal Br. 9–10).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
A. Preamble Limitation Issue
It is well-settled that a prior art reference’s silence with respect to a
function recited in a claim does not necessarily defeat a rejection over that
prior art reference. Cf. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). “A patent applicant is free to recite features of an apparatus either
structurally or functionally. . . . Yet, choosing to define an element
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functionally, i.e., by what it does, carries with it a risk.” Id. at 1478. Where
the PTO has reason to believe that a functional limitation asserted to be
critical for establishing patentability in the claimed subject matter may, in
fact, be an inherent characteristic of the prior art, it possesses the authority to
require an applicant to prove that the subject matter shown in the prior art
does not possess the specified characteristic. Id.
Earley’s Figure 1 is reproduced as follows:

Earley’s Figure 1 above depicts a wind turbine with CWC, which “permits
the capture and transformation of energy in an increasing flow (wind or
water) while maintaining a desired operating speed” and “permits capture
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and transformation of additional offered kinetic energy” (Earley, col. 1, ll.
31–49). As the Appellant concedes, Earley’s wind turbine includes a fixed
pitch rotor and a CWC falling within claim 26’s scope (Appeal Br. 7).
Because Earley’s wind turbine includes the same structural elements that the
Appellant discloses are responsible for the functional limitations recited in
claim 26’s preamble (Spec. 1, ll. 14–16), the burden was on the Appellant to
show that Earley’s wind turbine as modified by the suggestions in the other
prior art references would not inherently perform the same function recited
in claim 26. The Appellant does not direct us to any objective evidence in
satisfaction of meeting that burden. See In re Best, 562 F.2d 1252, 1255
(CCPA 1997) (“Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively,[] the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”).
B. Articulated Reason for Combining References
The Appellant argues that the Examiner fails to articulate a sufficient
reason for combining the references in the manner claimed (Appeal Br. 7).
That is incorrect. The Examiner’s explanation of the rejection articulates
specific reasons in support of combining the references in the manner
claimed by the Appellant (Final Act. 9–10).
Specifically, the Examiner relies on Carter for its disclosure of “an
extended vertical [drive] shaft 80 connecting a right angle gearbox (gears 86
and 98) to a multi-geared transmission (gears 94 and 96) having a low speed
input (first bevel gear 94) and a high speed output (second bevel gear 96) of
said multi-geared transmission” with the high speed output being connected
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to a first generator 100 (Final Act. 9 (bolding added); Carter, Fig. 1; col. 3, l.
41–col. 4, l. 13). Based on this finding, the Examiner concludes that “[i]t
would have been obvious to one skilled in the art . . . to use the extended
vertical [drive] shaft disclosed by Carter on the supporting tower disclosed
by Earley for the purpose of providing mechanical power to a generator
located at the base of a tower” (Final Act. 10).
The Examiner further relies on Simon for its disclosure of an
induction generator, which provides a cost-effective machine for converting
rotational energy to electricity (Final Act. 9; Simon ¶ 26). Based on this
disclosure, the Examiner concludes that a person having ordinary skill in the
art would have implemented an induction generator in Earley for the purpose
of providing, inter alia, a cost-effective machine for converting the
rotational energy to electricity (Final Act. 10).
The Appellant, on the other hand, does not identify the specific
error(s) in the Examiner’s articulated reasoning that warrants reversal. Jung,
637 F.3d at 1365–66 (“‘reversible error’ means that the applicant must
identify to the Board what the examiner did wrong”).
C. Unexpected Results
Although the Appellant argues that unexpected results are achieved,
the Appellant does not direct us to objective, experimental data comparing
the claimed invention against the closest prior art. Indeed, as we found
above, Earley explicitly teaches that the disclosed wind turbine with CWC
“permits the capture and transformation of energy in an increasing flow
(wind or water) while maintaining a desired operating speed” and “permits
capture and transformation of additional offered kinetic energy” (Earley, col.
1, ll. 31–49). Therefore, the Appellant’s unsupported argument is
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unpersuasive. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) (“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art. . . . Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.”).
For these reasons, we uphold the Examiner’s rejection as maintained
against claim 26.
D. Claim 29
Regarding claim 29, the Appellant argues that Earley does not
disclose an induction generator or excitation and that the Examiner’s
findings to the contrary are “completely false” (Appeal Br. 9–10). As the
Examiner points out (Ans. 17) and as we discussed above, the rejection
relies on Simon for the induction generator limitation.
Therefore, we also maintain the rejection as maintained against claim
29.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
26–29 103(a) Earley, Carter, Simon 26–29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED