Ex Parte Arel

Patent Trial and Appeal Board

Aug 28, 2013

12228342 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID V. AREL
____________

Appeal 2011-008392
Application 12/228,342
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008392
Application 12/228,342

2

STATEMENT OF THE CASE
David V. Arel (“Appellant”) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-12. We have jurisdiction under 35
U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1 and 12 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A wind turbine assembly comprising:
a wind turbine tower;
a sleeve member slidably coupled to the tower;
a wind turbine attached to the sleeve member;
a driving device for moving the sleeve member relative
to the wind turbine tower;
a guiding device for guiding the sleeve member
longitudinally along an outer surface of the tower, the guiding
device comprising:
a linear guide member extending longitudinally
along the outer surface of the tower; and
a guide member slot in an inner diameter of the
sleeve member wherein the guide member slot couples
with and is slidable along the guide member in a linear
path defined by the linear guide member.
App. Br. 9 (Claims App’x, Claim 1).
Appeal 2011-008392
Application 12/228,342

3
References
The Examiner relies upon the following prior art references:
Helm US 4,266,911 May 12, 1981
Potter US 4,342,539 Aug. 3, 1982
Baskin US 4,565,929 Jan. 21, 1986
Andruszkiw US 4,616,974 Oct. 14, 1986
Wood US 5,497,962 Mar. 12, 1996
Ruer US 2004/0169376 A1 Sept. 2, 2004
Rejections
The Examiner makes the following rejections:
I. Claims 1-3, 6, 10, and 11 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Helm and Ruer;
II. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Helm, Ruer, and Wood;
III. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Helm, Ruer, and Potter; and
IV. Claims 8, 9, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Helm, Ruer, Baskin, and Andruszkiw.
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I – Obviousness over Helm and Ruer
The Examiner concluded that the combination of Helm and Ruer
would have rendered the subject matter of claims 1-3, 6, 10, and 11 obvious
to one of ordinary skill in the art. Ans. 4-5. With respect to claim 1, the
Examiner found that Helm discloses the elements of the claim except the use
Appeal 2011-008392
Application 12/228,342

4
of a guiding device for guiding the sleeve member longitudinally along the
tower. Id. at 4. The Examiner found that Ruer discloses linear guide
members 30 extending longitudinally along the surface of tower 3a and
guide member slots 17a on the raised or lowered telescoping tower 3b that
are coupled with and slidable along the guide member 30. Id. The
Examiner further found that Ruer’s arrangement prevents the two tower
sections from rotating relative to one another. Id. (citing Ruer, para. [0079]).
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of invention “to modify the tower and
sleeve assembly of Helm by utilizing a linear guiding device as taught by
Ruer for the purpose of preventing the rotation of the sections relative to one
another.” Id. at 4-5.
Appellant raises several arguments in response to this rejection.1 We
address each in turn. Appellant first asserts that “wind turbine 10 [of Helm]
is not attached to sleeve member 15 as required by claim 1. Rather, the wind
turbine 10 is attached to tower 12 directly and at its lower end us [sic]
attached to a guide sleeve 28 which is non-rotatably joined to the tower 12.”
Br. 5.
We agree that element 15 of Helm is not attached to tower 12 directly.
That finding, however, does not end the inquiry because while the Examiner
initially relied upon element 15 as disclosing the claimed sleeve member
(Ans. 4), the Examiner, in the response to Appellant’s argument, relied upon
element 28 (shown in Figure 2 of Helm) and element 51 (shown in Figure 4

1 Appellant argues the claims subject to Rejection I as a group. See Br. 4-6.
We select claim 1 as representative. Accordingly claims 2, 3, 6, 10, and 11
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also
In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
Appeal 2011-008392
Application 12/228,342

5
of Helm) as disclosing the claimed sleeve member.2 Ans. 8. With this
understanding, we are not persuaded by Appellant’s first argument because
Helm’s wind turbine 10 is attached to element 28, as Appellant
acknowledges. Br. 5 (“the wind turbine 10 . . . [is] attached to a guide sleeve
28”).
Second, Appellant asserts that Helm’s sleeve member is not “slidably
attached to the tower” because when the arresting means 34 is disengaged,
sleeve 28 is also disengaged from tower 12 and ring 15 carries the weight of
power house 10. Br. 5.
Claim 1 calls for a sleeve member “slidably coupled” to the tower.
Appellant has not contended that “coupled” means “directly attached” and
we do not understand the Specification to convey such a narrow meaning.
See, e.g., Spec. at para. [0016] (“In the preferred embodiment, a plurality of
bushings or bearings are positioned between sleeve member 25 and wind
turbine tower 14 to reduce the friction present in the slidable connection.”).
As explained by the Examiner, during Helm’s raising or lowering process,
element 28 is sandwiched between the ring 15 and the power house 10.

2 The Examiner confuses the terminology slightly by referring to a “guide
sleeve element” where claim 1 recites a “sleeve member,” a “guiding
device,” and “guide member,” but not a “guide sleeve” or “guide sleeve
member.” See Ans. 8 (incorrectly indicating that Appellant asserted Helm
fails to disclose “the claimed guide sleeve” and that Helm’s elements 28 and
51 disclose a “guide sleeve element”). We understand the Examiner’s use of
“guide sleeve element” to refer to the claimed “sleeve member” because the
Examiner found that Helm discloses this element of the claims whereas the
Examiner relied upon Ruer as disclosing a “guiding device.” Ans. 4.
Additionally, the Examiner referred to element 15 of Helm as the “ring
(15),” not the sleeve member, in the Response to Argument section of the
Answer. Compare Ans. 9 with Ans. 4.
Appeal 2011-008392
Application 12/228,342

6
Ans. 9; see Helm, col. 3, l. 68 – col. 4, l. 5 (“In the lowering process, the
guide sleeve 28 contacts the ring 15 connected to the guy wires 13, thereby
connecting the ring 15 to the sleeve 28 and disengaging the arresting means
34.”). Thus, as the ring and power house slide up or down the tower, so too
does guide sleeve 28. Accordingly, even though Helm’s arresting means 34
join guide sleeve 28 to the tower (see Helm, col. 3, ll. 67-68), its
disengagement does not uncouple the sleeve 28 from the tower because the
sleeve becomes sandwiched between the powerhouse and ring and thus via
those elements remains slidably coupled to the tower.
Third, Appellant asserts that Helm does not disclose a “guide member
and . . . and slot engaging the guide member for linear vertical movement of
the powerhouse.” Br. 5. Appellant also asserts that what moves along the
tower in Helm is element 15, not sleeve 28.3 Id.
As noted above, the Examiner relied upon Ruer as disclosing the
guide member and slot engaging the guide member of claim 1, not Helm.
See Ans. 4. Accordingly, Helm’s failure to disclose these elements is
inapposite where a second reference discloses the missing elements. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”); see also In re Merck &

3 Appellant also expresses some confusion with respect to a telephone
interview with the Examiner. See Br. 5. In particular, Appellant expressed
confusion in that the sleeve in Helm’s Figure 4 is not element 28. Id. The
Examiner, however, explained the substance of the interview and correctly
explains in the Answer that the sleeve in Figure 4 is element 51, although it
was represented by element 28 in Figure 2. See Ans. 9 (explaining the
substance of the interview); see also Helm, col. 4, ll. 24-25 (referring to
“guide sleeve 51” in the context of Figure 4); fig. 4.
Appeal 2011-008392
Application 12/228,342

7
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (same); In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art.”).
Additionally, as also indicated above, Helm’s guide sleeve 28 does
move along the outer surface of the tower when sandwiched between the
power house and ring 15. See Helm, col. 3, l. 68 – col. 4, l. 5. Further,
Helm also discloses that the power house can be moved along the tower by
making “the guide rollers 29 friction rollers and driving them electrically to
move the guide sleeve 28 and the power house 10 with it up or down.” Id. at
col. 4, ll. 6-9. Thus, Appellant’s assertion that guide sleeve 28 does not
move along the tower is incorrect.
Fourth, Appellant contends that because Ruer discloses a telescoping
tower arrangement, guide members 30 and skids 17a and 17b are on the
inside wall not the outside of the tower. Br. 5. Thus, Appellant asserts that
Ruer does not disclose the elements missing from Helm. Id. at 6. Appellant
also asserts that the Examiner did not provide any reasoning “for moving the
inside slots of Ruer to the outside of Helm’s tower so that the sleeve 28,
which is detached from the tower, can move linearly up and down. [And
that t]here is no recognition of the problem solved by the present invention.”
Id.
In response to Appellant’s argument, the Examiner explained that
guide members and guide slots are arranged in Ruer such that they are
between the two surfaces that move relative to one another—one on the
inner surface of outer tower 3a and one on the outer surface of the inner
tower 3b. See Ans. 10; see also Ruer, figs. 5, 6. As applied to Ruer, the
Appeal 2011-008392
Application 12/228,342

8
Examiner indicated that the guide members and slots would be positioned
similarly, such that the guide members would be located along the outer
surface of the tower and the slots located on the inner surface of the sleeve
member. Ans. 10.
We do not find Appellant’s arguments persuasive. The Examiner’s
explanation for the relative placement of the guide member and slots in Ruer
and as applied to Helm is both logical and rational. Further, as noted above,
the Examiner provided a reason for moving the guide system of Ruer as
applied to Helm—because one of ordinary skill in the art at the time of
invention would employ such an arrangement between two surfaces intended
to move relative to one another. See Ans. 10. And, the Examiner found that
one of ordinary skill in the art would be prompted to modify Helm’s
arrangement to prevent the rotation of sections relative to one another.
See id. at 5; see also Ruer, para. [0079] (indicating that the use of U-shaped
skids 17 (which the Examiner found to disclose the claimed slots) prevents
rotation of the tower sections relative to one another). Thus, the Examiner’s
articulated reasoning has a rational underpinning which supports the
Examiner’s conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Additionally, the inquiry into whether an alleged invention would
have been obvious to one of ordinary skill in the art at the time of invention
is not limited only to the problem the patentee was trying to solve. See id. at
420 (“any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed”); see also Ans. 11. That being said, the
rationale provided by the Examiner is consistent with the problem to which
Appeal 2011-008392
Application 12/228,342

9
Appellant’s guide device is directed. See Ans. 11; see also Spec. [0041]
(“rotational movement of sleeve member 25 around outer surface 15 of wind
turbine tower 14 is prevented by the interaction between guide member 96
and guide member slot 98”).
Accordingly, we sustain Rejection I.
Rejection II – Obviousness over Helm, Ruer, and Wood
The Examiner concluded that the combination of Helm, Ruer, and
Wood would have rendered the subject matter of claims 4 and 5 obvious to
one of ordinary skill in the art at the time of invention. Ans. 5-6. The
Examiner found that Helm as modified by Ruer discloses the elements of the
claims except for the use of a geared lowering and raising means. Id. at 5.
The Examiner found that Wood discloses a telescoping tower element
including circular gears and motors that allows for the extension and
retraction of the tower element. Id. at 6. The Examiner determined that
because Wood and Helm disclose driving means for extending tower
elements, it would have been obvious to one of ordinary skill in the art at the
time of invention “to further modify the driving means of Helm by
substituting a gear and track arrangement taught by Wood since the
modification is simple substitution of one know[n] element for another
having predictable results, i.e. the extension of the sleeve member relative to
the tower.” Id.
Appellant contends that “as noted above, Helm and Ruer do not have
any articulated reason for moving the inside slots of Ruer to the outside of
Helm’s tower . . . . [and] Wood does not remedy this lacking . . . .” Br. 6.
Appellant also asserts that Wood is non-analogous art as it pertains to “a
Appeal 2011-008392
Application 12/228,342

10
mooring tower for a lighter than air vehicle” and “[t]here is no concept [sic]
raising and lowering apparatus of any kind.” Id.
We addressed Appellant’s first argument in our discussion of
Rejection I, supra, and did not find it persuasive based on the rationale
provided by the Examiner. Further, we are not persuaded that Wood is non-
analogous art.
Two separate tests define the scope of analogous art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)). The “field of endeavor” test
“requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325-26.
At a minimum, Wood is reasonably pertinent to the particular problem
with which the inventor is involved because both pertain to the problem of
effecting relative displacement of one element along another. See Ans. 12.
Particularly, both the invention and Wood pertain to raising and lowering
one element relative to another. In the invention, the elements are the wind
turbine and the tower, whereas in Wood, the elements are the telescoping
Appeal 2011-008392
Application 12/228,342

11
members 66 and 68. See, e.g., Wood, col. 5, ll. 10-13 (“The second end 64
of the second support member 54 includes two telescoping members 66 and
68 that are extended and retracted by rack and pinion gear assemblies 70 and
72, respectively . . . .”); see also id. at figs. 6, 9. Thus, the Examiner
properly considered Wood as analogous art.
Accordingly, we sustain Rejection II.
Rejection III – Obviousness over Helm, Ruer, and Potter
The Examiner concluded that the combination of Helm, Ruer, and
Potter would have rendered the subject matter of claim 7 obvious to one of
ordinary skill in the art at the time of invention. Ans. 6-7. The Examiner
found that Helm as modified by Ruer discloses the elements of the claims
except for the use of a locking mechanism including a plurality of retractable
pins. Id. at 6. The Examiner found that Potter discloses a plurality of
retractable pins 44 to couple relatively slidable tower members 40, 61, 56
together both vertically and rotationally. Id. The Examiner determined that
it would have been obvious to one of ordinary skill in the art at the time of
invention to modify the wind turbine of Helm by including the plurality of
pins for the retention means as taught by Potter “so as to facilitate locking of
the guide sleeve in a self-actuating manner.” Id. at 6-7.
Appellant asserts that claim 6 calls for a locking mechanism, and that
claim 7 specifies that the locking mechanism is a plurality of retractable
pins. Br. 7. Appellant first contends that “[t]he pins 44 [of Potter] as cited
by the Examiner are in fact latches, as noted on column 8, line 9, and not
pins.” Id. Appellant then states, “Potter describes a pivoting pin that arcs
into and out of engagement that is used with a jack screw to move the spars
up and down. Movement by the jack screw is different in kind [than] the
Appeal 2011-008392
Application 12/228,342

12
lateral movement of claim 1, and thus claim 7.” Id. Appellant further
asserts that Potter is used to modify Helm and Ruer, which do not teach the
invention, and thus “provides no motivation to make the change.” Id.
Additionally, Appellant contends that there is “no articulated reason for this
combination of references.” Id.
We do not find Appellant’s arguments persuasive. First, although
Appellant asserts that Potter does not disclose pins, Appellant later concedes
that Potter describes a “pivoting pin.” See Br. 7.
Second, we agree with the Examiner that Potter’s “pivoting pin”
discloses a “retractable pin.” We construe claims by applying the broadest
reasonable interpretation consistent with the specification, reading the claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art. E.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Claim 7 calls for a plurality of “retractable
pins.” The usage of the term “retract” in the claim and Specification is
consistent with its plain and ordinary meaning of “to draw something in or
back.” See, e.g., CHAMBERS 21ST CENTURY DICTIONARY (2001), retrieved
from http://www.credoreference.com/entry/chambdict/retract; see Spec.,
para. [0031] (“To lower wind turbine 12 from upper end 18 of wind turbine
tower 14, locking mechanism 50 first retracts pin members 54 within tower
14. The retraction of pin members 54 is shown in FIG. 6 by arrows R. Once
pin members 54 are retracted, driving device 24 may once again lower wind
turbine 12.”). Thus, the plain and ordinary meaning of “retractable” is “able
to be drawn in or back.”
The Examiner explained that Potter’s pins “are ‘retracted’ when
pivoted out of engagement with the groove (50) thereby unlocking the mast
Appeal 2011-008392
Application 12/228,342

13
elements (40, 61, 56) from one another.” Ans. 12-13. In this manner,
Potter’s pins are “able to be drawn in or back” away from latch holes 50.
See Potter, col. 8, ll. 5-10 (describing the raising of the apparatus); id. at
col. 13, ll. 11-13 (generally describing that the hoist means can provide
lowering force); id. at fig. 3. Thus, the Examiner’s finding that Potter
discloses retractable pins is supported by a preponderance of the evidence.
Further, the Examiner found that Helm discloses “an ‘arresting means
34 joining the guide sleeve 28 to the tower’ in a non-rotatable manner,” but
“is silent as to the specific structure of such an arresting mechanism.”
Ans. 13 (citing Helm, col. 3, ll. 67-68, 57-58). Thus, the Examiner’s
combination “provides Helm’s arresting means in the form [of] Potter’s
retractable pins.” Id. And, the Examiner articulated a reason for the
proposed combination with a rational underpinning— to facilitate locking of
the guide sleeve in a self-actuating manner. See id. at 6-7.
Accordingly, we sustain Rejection III.
Rejection IV – Obviousness over Helm, Ruer, Baskin, and Andruszkiw
The Examiner concluded that the combination of Helm, Ruer, Baskin,
and Andruszkiw would have rendered the subject matter of claims 8, 9, and
12 obvious to one of ordinary skill in the art at the time of invention.
Ans. 7-8. The Examiner found that Helm as modified by Ruer discloses the
elements of the claims except for the use of a brake and a protective
chamber. Id. at 7. The Examiner found that Baskin discloses a wind turbine
including a brake assembly and Andruszkiw discloses a protective chamber.
Id. The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of invention to modify the wind turbine of
Helm “by including a brake assembly as evidenced by Baskin so as to
Appeal 2011-008392
Application 12/228,342

14
prevent rotation of the rotor for the purpose of allowing for maintenance and
preventing damage in high winds.” Id. The Examiner also determined that
it would have been obvious to one of ordinary skill in the art at the time of
invention to modify the turbine of Helm “by utilizing a protective chamber
as taught by Andruszkiw for the purpose of preventing damage due to high
winds.” Id. at 8. The Examiner further determined that it would have been
obvious to one of ordinary skill in the art at the time of invention to position
the blades horizontally because it reduces “the size of the protective chamber
as well as the distance the tower must be lowered” as compared to
positioning the blades vertically. Id.
Appellant contends that “[t]here is no showing that Baskin can keep
the blades in a horizontal position as the turbine is lowered to a protective
chamber. Baskin can’t perform that function of claim 8.” Br. 7. Appellant
also asserts that “the limitations of claim 9, of the use of a brake pad and a
brake rotor operated by a piston, [are] not disclosed in Baskin. Baskin uses
hydraulic pressure and a spring to engage and disengage its brake.” Id.
Appellant further contends that “[t]he combination of these four references
still does not provide any articulated reasoning for modifying the Helm
reference as suggested by the Examiner.” Id. at 8. And, Appellant also
states that “to combine these references changes the principle operation of
the references.” Id.
First, we agree with the Examiner’s determination that Baskin’s
disclosure of a “rotor brake” is capable of stopping the rotor and rotationally
fixing the position of the blades. Ans. 13; see Baskin, col. 6, ll. 43-46
(disclosing a rotor brake). We also agree with the Examiner that Baskin and
Helm disclose rotors having two diametrically opposed blades and that
Appeal 2011-008392
Application 12/228,342

15
stopping the rotor can result in the blades being in a “singular plane,” and
hence in a horizontal position. See Ans. 13-14. Further, Appellant has not
explained why Baskin’s rotor brake would not be capable of stopping the
blades in such a position. Accordingly, we are not persuaded by Appellant’s
argument that Baskin’s rotor brake is not capable of performing the claimed
function.
Second, we agree with the Examiner’s position that “[a] hydraulically
actuated brake caliper [as disclosed in Baskin] is inherently one in which the
hydraulic fluid acts on a piston to bring a brake pad into and/or out of
contact with a brake rotor.” Id. at 14. Thus, Baskin’s disclosure of brake
caliper 56, which is “disengaged by the application of hydraulic pressure”
and “engaged by spring force when the hydraulic pressure is relieved,”
discloses the use of a brake pad and brake rotor operated by a piston.
See, e.g., Baskin, col. 6, ll. 40-62, fig. 5.
Additionally, as noted above, the Examiner articulated reasons with
rational underpinnings for the combinations proposed in this rejection, and
Appellant has not explained beyond the cursory statement quoted above why
the Examiner’s rationale is deficient. Further, Appellant’s contention that
the combination of these references “changes the principle operation of the
references” is entirely deficient of any explanation as to what the principle
operation of the references was prior to the combination and how their
combination, as proposed by the Examiner, changes their principal of
operation. As such, we are not persuaded by Appellant’s assertion.
Accordingly, we sustain Rejection IV.
Appeal 2011-008392
Application 12/228,342

16
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-12.
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

mls