Ex Parte 7160085 et al

Patent Trial and Appeal Board

Oct 14, 2014

90012509 (P.T.A.B. Oct. 14, 2014)

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.
90/012,509 09/12/2012 7160085 135713.00004 9670
26710 7590 10/14/2014
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/14/2014 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 MECAL APPLIED MECHANICS B.V.
Patent Owner and Appellant1
________________

Appeal 2014-003961
Reexamination Control 90/012,509
Patent 7,160,085 B22
Technology Center 3700
________________

Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mecal Applied Mechanics B.V. (hereinafter “Appellant”), the real
party in interest of U.S. Patent Number 7,160,085 B2 (hereinafter the “’085
patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s
final decision (hereinafter “Final”) to reject claims 1, 3, 4, 7, 9, 10, 14, 16,
19–22, 24, 26, and 27. Final 7. The Examiner subsequently withdrew the

1 See Appeal Brief 1.
2 US 7,160,085 B2 issued January 9, 2007 from Application Number
10/504,186, filed February 12, 2003.
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rejections of claims 5, 6, 11, and 13. Ans. 3. The Examiner finds that
claims 23 and 25 “are allowable” and that claims 12, 15, and 28–31 “contain
allowable subject matter but are objected to because they depend on
amended claim 1.” 3 Final 14. Claims 2, 8, 17, and 18 are canceled. Claims
App’x. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

THE CLAIMED SUBJECT MATTER
The ’085 patent “relates to a wind turbine comprising a stationary
vertical mast on which the moving part of a wind turbine is placed, which
tower is at least partly composed of prefabricated parts.” ’085 patent 1:10–
13. Independent claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A wind turbine, comprising a stationary vertical
mast on which a moving part of the wind turbine is arranged,
said mast including an annular mast section composed of
prefabricated adjacent wall parts that consist substantially of
concrete, said adjacent wall parts being placed side by side and
having a height and width, wherein said height is at least
approximately twice said width and horizontal edges of said
annular mast section are placed on top of horizontal edges of
another mast section, wherein said mast section is composed of
three or more wall parts and the height of said mast section is
greater than the diameter of said mast section.

3 Claim 15 is an independent claim, hence it does not “depend on amended
claim 1” as the Examiner finds. Final 14. We presume the Examiner meant
to say that claim 15 is also allowable.
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REFERENCES RELIED ON BY THE EXAMINER4
McNulty US 4,435,242 Mar. 6, 1984
Sasaichi5 JP 55-32813 Mar. 7, 1980
Sukeaki6 JP 61282562 Dec. 12, 1986
Klaus7 DE 19503512 A1 Aug. 8, 1996
Nakai8 JP 3074144 Dec. 19, 2000
Kopatschek9 EP 1 262 614 A2 May 25, 2002

THE REJECTIONS ON APPEAL
Claims 1, 3, 4, 7, 9, 10, 14, 19–22, 24, and 26 are unpatentable under
35 U.S.C. § 103(a) as obvious over JP ʼ813 and DE ʼ512. Final 8.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over JP ʼ813, DE ʼ512, and JP ʼ562. Final 12.
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over JP ʼ813, DE ʼ512, and McNulty. Final 13.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over JP ʼ813, DE ʼ512 and further in view of either EP ʼ614 or JP ʼ144.
Final 14.

4 Additional references were brought to the Examiner’s attention (Final 4–7)
but the Examiner only relied on the above listed references to finally reject
the indicated claims. Final 8–14.
5 Identified by the Examiner as “JP ʼ813.” Final 5. We do the same.
6 Identified by the Examiner as “JP ʼ562.” Final 6. We do the same.
7 Identified by the Examiner as “DE ʼ512.” Final 5. We do the same.
8 Identified by the Examiner as “JP ʼ144.” Final 5. We do the same.
9 Identified by the Examiner as “EP ʼ614.” Final 14. We do the same.
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ANALYSIS
The rejection of claims 1, 3, 4, 7, 9, 10, 14, 19–22, 24, and 26
as obvious over JP ʼ813 and DE ʼ512
Both independent apparatus claims on appeal, i.e., claims 1 and 21,
contain similar limitations. Claim 1 includes the limitation of a mast
“including an annular mast section” and also the limitation that the
“horizontal edges of said annular mast section are placed on top of
horizontal edges of another mast section.” Claim 21 includes the limitation
of “a plurality of stacked annual mast sections.” Remaining claims 3, 4, 7,
9, 10, 14, 19, 20, 22, 24, and 26 depend from either claim 1 or 21 and hence,
also include such limitations.
The Examiner finds that JP ʼ813 discloses these limitations (the
Examiner relies on DE ʼ512 for disclosing the use of a concrete mast “to
support wind turbines”). Final 8. The Examiner also provides a reason to
combine JP ʼ813 and DE ʼ512 (i.e., “to provide an easily transported yet
strong support for a wind turbine”). Final 8.
Appellant succinctly contends that
The terms “stacked” and “placed” define the cooperation
between successive annular mast sections, either explicitly
(Claim 21) or implicitly (Claim 1), and specifically define the
relative position of two successive annular mast sections within
the mast. Nothing in JP ʼ813 discloses annular mast sections as
required in the pending claims.
App. Br. 4.
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Referring to JP ʼ813,10 including the associated drawings, this
reference discloses that a
built-up pole is completed by arranging 12 pre-molded bar-like
concrete base materials 1 in a circle [and] tightening the outer
circumference of the base materials 1 with several steel bands
3.
JP ʼ813, page 3. This reference also states that
if the length of the base materials 1 makes it difficult to
transport the base materials 1, each base material 1 is pre-
divided into pieces that are short enough to be transported. As
shown in Figure 4, a bolt 10 or a nut 11 is pre-implanted at the
terminal of each of the resulting base materials so that the base
materials can be transported to the site, where the base
materials can be built up. This is also within the technical scope
of the present invention.
JP ʼ813, page 4. Hence, as paraphrased by the Examiner, JP ʼ813 describes
bar-like panels 1 “which are placed side by side” to form a completed pole.
Final 8. The Examiner also finds that the bar-like panels “form annular mast
sections” and that they “are stacked to form the mast.”
Appellant does not dispute that JP ʼ813 discloses elongate members
that are placed side by side in a circle and held there by bands, or that JP
ʼ813 discloses distinct members that may be built up to their final length via
the well-known bolt and nut arrangement. See, e.g., JP ʼ813, Figs. 1, 3, 4
and 8. However, Appellant disputes that members 1 form annular mast
sections and that JP ʼ813 discloses annular sections stacked one atop the
other as claimed. App. Br. 5.

10 We rely on the English language translation found in the record for our
understanding of this reference.
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The Examiner reasons that Appellant’s “claims are apparatus claims,
not method claims” and that with respect to apparatus claims, “differences
must be structural.” Ans. 4. On this point, the Examiner finds that
Appellant “has provided no evidence that the finished product that JP ʼ813
forms by banding together long planks and the product of the claims which
is formed by stacking annular sections are any different.” 11 Ans. 4; see also
Ans. 5. The Examiner continues stating that “[i]n a product by process
claim, the process must produce structural differences from similar products
formed by other processes.” Ans. 4–5.
Appellant claims a mast, that is certain, but a mast employing and
arranging certain components which include an “annular mast section” and
placing that annular mast section “on top of” “another mast section.” We
are not certain that, once assembled, Appellant’s mast would be the same as
JP ʼ813’s pole because Appellant’s mast would have horizontal joints while
JP ʼ813’s pole would have vertical joints (albeit they are both masts/poles
and hence, to some degree, would be similar as the Examiner finds, see Ans.
4, 5).12

11 We note the Examiner is addressing the “finished product” and not the
“annular mast section” components which are claimed.
12 “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) (citing In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Also, to establish prima facie
unpatentability of a product-by-process claim, the Patent Office need only
find that the prior art product “reasonably appears to be either identical with

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In the present matter, Appellant claims a plurality of annular13 mast
section components with one member placed atop another. On the other
hand, JP ʼ813 discloses elongate bar-like members 1 placed side by side and
held in place by bands. The Examiner does not provide a rational basis for
finding that the elongated components of JP ʼ813 teach or disclose
Appellant’s ring-like members. In short, the Examiner does not explain how
JP ʼ813’s elongated member 1 can be equated to an annular mast section or
how, once JP ʼ813’s pole is completed, this single finished pole teaches a
plurality of annular sections.
We are also instructed by our reviewing court that every element and
limitation of the claimed invention “must be shown in a single prior
reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (emphasis added). Here, the
Examiner does not indicate how the side-by-side abutment disclosed in JP
ʼ813 teaches the placement or stacking of one annular mast section on top of
another. Further, the Examiner does not explain how a multitude of annular
mast sections can be assembled as per JP ʼ813’s nut and bolt methodology,
i.e., one atop the other, without adjacent nuts/bolts that project from adjacent
members 1 interfering with such threaded assembly.

or slightly different from” the claimed product. See In re Brown, 459 F.2d
531, 535 (CCPA 1972).
13 WEBSTER’S NEW COLLEGIATE DICTIONARY 46 (1979) defines
“annular” as “of, relating to, or forming a ring.” See also
http://www.merriam-webster.com/dictionary/annular accessed October 2,
2014.
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In short, we disagree with the Examiner that Appellant has failed to
recite a structural difference between Appellant’s claimed components and
those disclosed in JP ʼ813; and we further disagree that JP ʼ813 discloses
such components arranged as claimed. Accordingly, we reverse the
Examiner’s rejection of claims 1, 3, 4, 7, 9, 10, 14, 19–22, 24, and 26.
The rejection of claim 16
as being unpatentable over JP ʼ813, DE ʼ512, and JP ʼ562
Claim 16 depends from claim 1 and includes the additional limitation
of tension cables extending interior of the mast. The Examiner relies on JP
ʼ813 and DE ʼ512 as above with respect to claim 1 and further relies on JP
ʼ562 for disclosing “tension wires 3 extending through the interior of the
mast.” 14 Final 13. The Examiner does not rely on JP ʼ562 to address and/or
cure the defect of JP ʼ813 as discussed supra, and accordingly, we reverse
the Examiner’s rejection of claim 16.
The rejection of claim 26
as being unpatentable over JP ʼ813, DE ʼ512, and McNulty
Claim 26 depends from claim 1 and includes the additional limitation
that “adjacent wall parts have edges with cooperating vertical portions and
horizontally overlapping portions.” The Examiner relies on JP ʼ813 and DE
ʼ512 as above with respect to claim 1 and further relies on McNulty for
showing “in figure 1(b), a mast structure made from overlapping panels ‘to
obtain the necessary strength and rigidity (column 1 lines 53-54).’” Final

14 The Examiner also makes the finding that “JP '562 shows in figure 1, a
mast structure made from stacking cylindrical sections 1” but does not
further elaborate on this point and relies instead on JP '562 for disclosing
internal tension wires. Final 13.
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13. The Examiner does not rely on JP ʼ562 to cure the defect of JP ʼ813 as
discussed supra, and accordingly, we reverse the Examiner’s rejection of
claim 26.
The rejection of claim 27 as being unpatentable over JP ʼ813, DE ʼ512
and further in view of either EP ʼ614 or JP ʼ144
Claim 27 depends from claim 1 and includes the additional limitation
of “further comprising a prefabricated steel top mast coupled to an
uppermost mast section.” The Examiner relies on JP ʼ813 and DE ʼ512 as
above with respect to claim 1 and further relies on either of EP ʼ614 or JP
ʼ144 for disclosing this additional limitation. Final 14. The Examiner does
not rely on either of EP ʼ614 or JP ʼ144 to cure the defect of JP ʼ813 as
discussed supra, and accordingly, we reverse the Examiner’s rejection of
claim 27.
DECISION
The Examiner’s rejections of claims 1, 3, 4, 7, 9, 10, 14, 16, 19–22,
24, 26, and 27 are reversed.

REVERSED

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