Ex Parte Obrecht

Patent Trial and Appeal Board

May 30, 2017

12938439 (P.T.A.B. May. 30, 2017)

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.
12/938,439 11/03/2010 John M. Obrecht 2010P19554US 3444
28524 7590 06/01/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
SEABE, JUSTIN D
Orlando, EL 32817 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. OBRECHT
Appeal 2014-004952
Application 12/938,439
Technology Center 3700
Before BRANDON J. WARNER, FREDERICK C. LANEY, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1—8, 10, 11, and 13—17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We are informed that the real party in interest is Siemens
Aktiengesellschaft. Appeal Br. 1.
2 After the Final Action, independent claim 11 was amended to incorporate
the limitations of dependent claim 12, and claim 12 was canceled, with the
Examiner entering these claim amendments. Advisory Action 1. Claim 11,
as amended, now stands rejected on the same grounds as claim 12. Appeal
Br. 12; Ans. 6-8.
Appeal 2014-004952
Application 12/938,439
CLAIMED SUBJECT MATTER
The claims are directed to a system and method for damping motion
of a wind turbine. Claims 1, 8, and 11 are independent. Claims 1 and 8,
reproduced below, illustrate the claimed subject matter:
1. A system for damping motion of a wind turbine
comprising:
a sensor operable to provide a signal representative of a
motion of the wind turbine in at least one degree of freedom;
a movable mass disposed on a blade of the wind turbine,
the movable mass configured for movement along a length of the
blade, wherein the length of the blade is fixed during the
movement of the movable mass; and
an actuator associated with the movable mass for moving
the movable mass along the length of the blade; and
a controller communicably associated with the sensor and
the actuator;
wherein the controller is operable to receive the signal
from the sensor and to responsively direct the actuator to move
the movable mass along the length of the blade to a degree
effective to dampen motion of the wind turbine in the at least one
degree of freedom.
8. A method for operating a wind turbine having a plurality
of blades, the method comprising:
generating a signal representative of an extent and a phase
of motion of the wind turbine in at least one degree of freedom
via at least one sensor;
executing a forcing function in response to the generated
signal effective to determine driving forces necessary to quench
the motion of the wind turbine in the at least one degree of
freedom; and
generating the driving forces by moving masses disposed
along a fixed length of at least one of the plurality of blades a
predetermined distance as determined by the forcing function to
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Application 12/938,439
quench the motion of the wind turbine in the at least one degree
of freedom.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gandhi
Dawson ’070
Dawson ’687
Cawthome
Wirthmann
US 2009/0290981 A1
US 7,632,070 B2
US 2010/0158687 A1
US 8,029,240 B2
DE 102006030167 A1
Nov. 26, 2009
Dec. 15,2009
June 24, 2010
Oct. 4,2011
Jan. 3, 2008
Appellant’s Admitted Prior Art (“AAPA”) regarding offshore wind
turbines and the reasons for so locating them as described on page 1,
lines 11—15, of Appellant’s Specification.
REJECTIONS
I. Claims 1, 6, 13, and 14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Wirthmann.
II. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wirthmann in view of Dawson ’687.
III. Claims 4 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wirthmann in view of Gandhi and Dawson ’070.
IV. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wirthmann in view of Gandhi, Dawson ’070, and Cawthome.
V. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wirthmann in view of AAPA.
VI. Claims 8, 10, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wirthmann in view of Cawthome.
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Application 12/938,439
VII. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wirthmann and Dawson ’070.
OPINION
Rejection I
The Examiner found that Wirthmann discloses all the limitations of
claim 1. Final Act. 2. Appellant contends that two limitations in claim 1 are
missing from Wirthmann. Appeal Br. 3. Specifically, Appellant first
contends that Wirthmann does not disclose “a sensor operable to provide a
signal representative of a motion of the wind turbine in one or more degrees
of freedom.” Id. Second, Appellant contends that Wirthmann does not
disclose a “controller . . . operable to receive the signal from the sensor and
responsively direct the actuator to move the movable mass along the length
of the blade to dampen motion in one or more degrees of freedom.” Id.
Wirthmann discloses a balancing system for use in a wind turbine
rotor. Wirthmann 11.3 Wirthmann states that “a strong imbalance” between
the blades of a wind turbine may lead to damage. Id. 13. Wirthmann cites
icing on the blade of the rotor as an example of a cause of such an
imbalance. Id. Wirthmann achieves the goal of reducing imbalance using a
weight inside the rotor blade, which can be guided along the longitudinal
axis of the blade. Id. ^5. Wirthmann states that with this arrangement “it is
possible to dynamically balance the rotor blade ... so that smooth running
and thus a low bearing wear is caused.” Id. 1 6. Wirthmann describes his
device as including a weight (“body mass”) 5, a track (“linear unit”) 4, a
toothed belt 4a, and a motor 3. Id. 113. The location of the weight within
3 All references to Wirthmann (and quotations from it) are to the record copy
of a machine translation from the original German.
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the rotor blade is varied by means of the motor. Id. 116. A drive controller
2 controls the motor 3 and receives a control signal 6. Id. “With a suitable
sensor, the rotor blade can be balanced during operation.” Id. 112. “By a
continuous current and signal supply [from] the rotor blades, the [weight]
can be moved linearly during operation, allowing to adjust to changing
operating conditions.” Id.^ 13. “The invention enables the minimization of
vibrations in wind turbines by not [balanced, i.e., unbalanced,] or
incorrectly] balanced blades.” Id. 116. In determining what constitutes a
“suitable sensor” (112) the Examiner finds that the sensor “must inherently
be able to provide a signal of some kind representative of the motion of the
wind turbine — whether in the blades, the nacelle, the hub, or the tower — to
be able to know where and/or how fast the mass must travel along the length
of the blade.” Ans. 12 (emphasis omitted).
Because Appellant contends that Wirthmann does not disclose the
claimed sensor, the decision in this case turns in large part on what sensor
one of ordinary skill in the art would understand to be “suitable.” See In re
Paulsen, 30 F. 3d 1475, 1480 (Fed. Cir. 1994). Appellant contends that
Wirthmann’s “suitable sensor” (Wirthmann 112) is not “a sensor operable
to provide a signal representative of a motion of the wind turbine in one or
more degrees of freedom.” Appeal Br. 4. Appellant suggests, because
Wirthmann identifies ice formation and its resulting mass imbalance as one
cause of imbalance in wind turbines, that detection of mass imbalance is
different from detecting motion caused by that imbalance, and that mass
imbalance may be detected by a variety of sensors including visual, sonic,
ultrasonic sensors. Reply Br. 2 (Appellant provides no evidence of such
sensors or their capabilities). It follows, according to Appellant, that a
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sensor of a motion of the wind turbine in at least one degree of freedom is
not necessarily present in Wirthmann. Appeal Br. 5—6.
We find this argument unpersuasive because Wirthmann makes clear
that ice build-up is but an example, using phrases like “such as” (1 6) and
“for example” (13) when discussing icing of the rotor blades. As noted
above, Wirthmann is concerned with limiting vibration while the turbine is
operating. Without the sensor to generate a signal representative of at least
one dimension of movement of the turbine, Wirthmann’s system would be
unable to achieve its stated purpose of reducing vibration, as the Examiner
found. Ans. 12. Accordingly, we agree with the Examiner that
Wirthmann’s “suitable sensor” necessarily provides a signal representative
of a motion of the wind turbine in at least one degree of freedom.4 Ans. 12.
Appellant next contends that
Wirthmann fails to disclose that the controller is operable to
receive a signal from the sensor and responsively direct the
actuator to move the movable mass along the length of the blade
4 Appellant asserts that the Examiner “misrepresented” the language of
claim 1. Appeal Br. 4. We take such an allegation seriously. The Examiner
omitted a portion of claim 1, italicized in the following: “a sensor operable
to provide a signal representative of a motion of the wind turbine in at least
one degree of freedom.” See Advisory Action 2. However, we find no
misrepresentation inasmuch as a “degree of freedom” is defined as “any of a
limited number of ways in which a body may move or in which a dynamic
system may change.” https://www.merriam-webster.com/dictionary/
degree%20of%20freedom (last accessed May 16, 2017). Thus “degree of
freedom,” especially in a vibrating system, necessarily connotes motion.
Appellant’s briefing stands out from the norm because of the repeated
(six) allegations of “misrepresentation” by the Examiner, and we find them
all to be unsupported. Appellant may disagree with the Examiner’s position,
but repeated allegations that things were “misrepresented” walks the line of
professional decorum and courtesy required of an appellant by 37 C.F.R.
§1.3, and does not assist the Board in resolving the pertinent issues.
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to a degree effective to dampen the motion of the wind turbine in
the one or more degrees of freedom.
Appeal Br. 5. Appellant bases this argument on Wirthmann’s disclosure that
icing is an exemplary cause of vibration in wind turbines. As discussed
above, Wirthmann is focused on reducing vibration caused by imbalance,
and this focus is not limited to imbalances caused by uneven icing, even if
that were a principal concern. Wirthmann 116 (“The invention enables the
minimization of vibrations in wind turbines by not [balanced, i.e.
unbalanced] or incorrectly] balanced blades.”). The Examiner finds that
Wirthmann discloses “a controller (2, 6) [that] is communicably associated
with the sensor and actuator, moving the mass to effectively dampen the
motion of the wind turbine. The controller, which controls the actuator (3)
moves the mass with corresponding position reference values and/or speed
reference values.” Ans. 12 (citing Wirthmann 116) (emphasis omitted).
Claim 1 is not limited to any particular cause of vibration, and neither is
Wirthmann. Wirthmann shows control signal 6, which necessarily includes
at least input from the sensor, fed to drive electronics 2 to control actuator 3.
Accordingly, we agree with the Examiner that Wirthmann discloses
a controller communicably associated with the sensor and
the actuator;
wherein the controller is operable to receive the signal
from the sensor and to responsively direct the actuator to move
the movable mass along the length of the blade to a degree
effective to dampen the motion of the wind turbine in the at least
one degree of freedom.
Appeal Br. 12 (Claims App.). See Final Act. 2; Ans. 2—3, 12—14.
Finally, in connection with claim 1, Appellant asserts that the
Examiner misrepresented Wirthmann by finding that “Wirthmann discloses
‘the mass ... moves along the blade... in order to reduce vibrations’ and ‘the
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vibrations would propagate in several directions representing more than one
degree of freedom.’ (Advisory Action, page 2).” Appeal Br. 5. Wirthmann
explicitly states that his device achieves its objective (“minimization of
vibrations” (116)) by placing a mass inside the rotor blade of a wind
turbine, which mass can be moved within the rotor blade by a driving means
and a guide along the longitudinal axis of the rotor blade. Wirthmann | 5.
“With this arrangement, it is possible to dynamically balance the rotor blade
and depending on the current operating conditions, so that a smooth running
and thus low bearing wear is caused.” Id. 1 6. Thus, Wirthmann
“dynamically” balances the rotor “depending on the current operating
conditions.” Id. “With a suitable sensor, the rotor blade can be balanced
during operation.” Id. 112 (emphasis added). As discussed below, a
rotating wind turbine necessarily moves in three-dimensional space, and
vibrates in at least two degrees of freedom. We find no misrepresentation or
error in the Examiner’s Advisory Action finding, nor do we find the
Examiner’s statements merely conclusory.
Appellant has not persuaded us that the Examiner erred in finding that
claim 1 is anticipated by Wirthmann, and after considering all the evidence
and arguments, we sustain the Examiner’s rejection of claim 1.
Claim 6 depends from claim 1, adding that the
first degree of freedom is representative of a vertical motion of
the wind turbine, wherein the second degree of freedom is
representative of a horizontal motion of the wind turbine, and
wherein the controller is configured to move the movable mass
on the selected ones of the plurality of blades to a degree
effective to provide a pair of driving forces on the wind turbine
that are resonant with the vertical motion and horizontal motion
of the wind turbine.
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Appeal Br. 13 (Claims App.). Appellant contends that “nothing in
Wirthmann discloses a sensor to even measure motion of the wind turbine in
a vertical or horizontal direction, let alone that such data is transmitted to the
controller 2 and used to determine how far to move the mass 5.” Appeal Br.
6.
We agree with the Examiner that Wirthmann inherently discloses
damping motion of a wind turbine in one or more degrees of freedom. Ans.
12—13. A wind turbine necessarily operates in three-dimensional space, and
can vibrate with motion detectable in one or more of those three dimensions,
as the Examiner found. Ans. 13—14. Because Wirthmann discloses that his
device is capable of reducing vibration “during operation” (Wirthmann
113), we conclude that at least two degrees of freedom are involved, e.g.,
the angular position of the rotating blade and its radial displacement, or,
alternatively, in the x and y directions of a Cartesian coordinate system. Cf.
Spec. 4:29—5:11 (mentioning both x, y Cartesian coordinates and polar the
coordinates: amplitude and phase) and Spec. 5:28—30 (“The signal may be
representative of a magnitude mid a phase of motion of the wind turbine 10
in one or more degrees of freedom.” (emphasis added)). Accordingly, we
are not persuaded by Appellant’s argument that Wirthmann does not
anticipate claim 6 because Wirthmann does not disclose a sensor to
“measure motion of the wind turbine in a vertical or horizontal direction.”
Appeal Br. 5.
In connection with claim 6 Appellant also argues that Wirthmann does
not transmit sensor data “to the controller 2 and [use it] to determine how far
to move the mass 5.” Appeal Br. 6. The Examiner carefully set out the
relationship between Wirthmann’s “suitable sensor” (Wirthmann 112), the
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signal 6 it generates, and the position of the movable mass. Ans. 12—13. As
noted above, a turbine rotor during operation necessarily moves in three-
dimensional space, changing position with the passage of time, and any
sensor suitable for sensing vibrations in such a rotor in order to position a
vibration-dampening counter-weight necessarily measures displacement in
at least two dimensions or degrees of freedom. The fact that Wirthmann
dampens vibrations during operation of the rotor necessarily requires
measurement representing motion of the rotor in two degrees of freedom.
See Ans. 14—15. In view of the foregoing and after consideration of all the
arguments and evidence, we find no error in the Examiner’s rejection of
claim 6, which we therefore sustain.
Claim 14 depends from claims 1 and 13 and adds, inter alia, that “the
actuator is provided on the track.” Appeal Br. 14 (Claims App). Appellant
argues that claim 14 is not anticipated by Wirthmann because Wirthmann’s
motor 3 is not positioned on a track. Appeal Br. 6. The Examiner finds that
Wirthmann’s “linear guide” or “linear unit” meets claim 14’s requirement
for a “track.” Ans. 15. Appellant argues that “the belt 4 of Wirthmann is
not a track, and the motor 3 is not positioned on the belt 4.” Appeal Br. 6
(emphasis added). The Examiner finds that Wirthmann’s “belt,” “linear
guide,” and “linear unit” by which the mass moves constitute a “track”
within the broadest reasonable interpretation of the latter. Ans. 15. We
agree with the Examiner because Wirthmann identifies the element 4 as a
“linear unit” or a “linear guide.” Ans. 15, see Wirthmann || 8, 9, 13, 14, 15,
16. The belt 4A is not itself a track but is part of one.
Appellant also argues that motor 3 in Wirthmann is not “on the track.”
Appeal Br. 6—7. The Examiner explains that the word “on” is extremely
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broad and further that Appellant’s figures, which show an actuator “on” the
track, show nothing more than an actuator in contact with it. Ans. 15. We
agree that Wirthmann’s motor 3 is “on the track,” being shown in direct
contact with the track 4 in Wirthmann’s Figure. Also, Wirthmann describes
the arrangement: “The linear guide 4 by means of a toothed wheel (not
shown) and a toothed belt 4a [shown], wherein the drive [motor] driving the
pulley via the tooth[ed] belt, and wherein the mass body 5 is arranged on the
belt 4a.” Wirthmann 116.
Appellant urges that Specification, Figure 5, defines “on the track” in
a manner that precludes “in contact with an outer surface” as found by the
Examiner. See Appeal Br. 6—7; Reply Br. 3. We agree with the Examiner
that Appellant is seeking to have a limitation shown in (and not even
verbally described by) the Specification imported into the claims, and that to
do so is improper. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) There is nothing inconsistent between the
Examiner’s broad reading of “on the track” in claim 16 and the Appellant’s
Specification, as argued by Appellant. Reply Br. 3.
Having considered all the evidence and arguments, we are not
persuaded of error in the Examiner’s rejection of claim 14, which we
therefore sustain.
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Rejection II
Appellant argues that the rejection of claims 2 and 3 should be
reversed because Dawson ’687 relates to rotors with variable-length blades
and Wirthmann discloses only fixed-length rotors. Appeal Br. 7. Appellant
also asserts that the Examiner engaged in hindsight by suggesting that the
sensor system of Dawson ’687 be used in Wirthmann. Reply Br. 3. We are
not persuaded by these arguments. The Answer uses the sensors of Dawson
’687 with the vibration dampening system of Wirthmann. Ans. 16.
Wirthmann explicitly suggests the use of “suitable sensors” (112) and
Dawson ’687 provides them in the same environment. Ans. 16. As for the
hindsight argument,
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971). Against this
standard, we find no impermissible hindsight, as Dawson ’687 teaches the
sensors and Wirthmann instructs that suitable sensors should be used.
Accordingly, we find no error in the rejection of claims 2 and 3 — which
depend directly or indirectly from claim 1 — and therefore sustain it.
Rejection III
Claims 4 and 11 (as amended) have been rejected over Wirthmann,
Dawson ’070 and Gandhi. Gandhi discloses a wind turbine blade, which can
be balanced by adjusting its effective length. One section of the blade is
formed with an external, opposing pair of grooves resulting in an I-shaped
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cross section, while the other blade section includes tabs which slide in the
grooves. Dawson ’070 shows a wind turbine blade whose length can be
adjusted either with a hydraulic actuator or with a belt and pulley
arrangement. Dawson ’070 7:56—8:3.
Appellant makes three arguments against the combination of
references found by the Examiner to be obvious. First, Appellant argues that
the tongue and groove arrangement of Gandhi, being on the outside surface
of one of the blade sections, would not be placed inside a rotor. Appeal Br.
8. However, aside from pointing out the difference between the location of
Gandhi’s structure and that of Wirthmann which it would replace, Appellant
makes no reasoned argument why the substitution would not or could not be
made. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”) Accordingly, we are not persuaded the Examiner
erred on this basis.
Appellant’s second argument against Rejection III is that the
Examiner failed to provide documentary support for the official notice that
“I-shaped spars provide for efficiency in handling bending and shear loads
while reducing the overall mass and material.” Appeal Br. 8. The
Examiner’s Answer points to the earlier Advisory Action and identifies
specifically the materials relied on. Appeal Br. 17. Accordingly, we find no
error in the rejection of claims 4 and 11 on this basis.
Appellant’s third argument is that the Dawson ’070 patent discloses
vibration dampening by varying the length of a rotor, while Wirthmann
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relates to vibration dampening by varying the position of a weight within a
rotor of fixed length. Appeal Br. 9. Because of these differences, Appellant
argues,
one skilled in the art would not find it obvious to modify
Wirthmann and replace the motor 3 with the actuator 21 of
Dawson ‘070, as the actuator 21 of Dawson ‘070 is configured
to vary the length of the blades and not to vary the position of the
mass 5 within the fixed-length blade of Wirthmann.
Id. The Examiner finds that using Dawson ’070’s actuator in place of
Wirthmann’s motor is a mere matter of substitution to achieve predictable
results, a conclusion with which we agree. Final Act. 4—5. Appellant has
provided no reasoned argument why the differing linear actuators could not
be substituted one for another, and in fact, Dawson ’070 clearly suggests
such a possibility. See Dawson ’070, 7:56—8:3.
Having considered Appellant’s arguments and the evidence, we are
not persuaded the Examiner erred in rejecting claims 4 and 11 (as amended),
and we therefore sustain the rejection.
Rejections IV and V
Appellant argues claims 5 and 7 are patentable for the same reasons
that claim 1 was argued patentable. Appeal Br. 9. We have not been
persuaded of error in the rejection of claim 1, and accordingly we affirm the
rejection of claims 5 and 7 on the same basis.
Rejection VI
Appellant argues claims 8, 10, 16, and 17 as a group. We select claim
8 as representative, and the remaining claims in this group stand or fall with
claim 8. 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner finds that Wirthmann discloses all the limitations of
claim 8 except for the claimed multiple masses. Final Act. 6. The Examiner
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finds that Cawthome teaches multiple masses. Id. The Examiner concludes
that it would have been obvious to modify the weight of Wirthmann by
utilizing the plurality of masses taught by Cawthome for the purposes of
optimizing the necessary masses to properly dampen the motion of the wind
turbine in at least one degree of freedom. Final Act. 7. The Appellant
argues that adding additional weight to Wirthmann — as Appellant asserts
the Examiner proposes — would change the principal of operation of
Wirthmann because Wirthmann is already balanced and requires no
additional weights. Appeal Br. 10. The Examiner’s Answer corrects the
Appellant’s misunderstanding by stating that adding additional weight
and/or mass is not necessary. Ans. 18. All the Examiner was holding
obvious was the separation of the singular mass 5 of Wirthmann into
multiple masses. Final Act. 6—7, Ans. 18.
Appellant’s Reply Brief attempts to cabin Wirthmann to a single
mass, as if making that mass 5 of several pieces were somehow precluded by
the disclosure of Wirthmann. Reply Br. 4. Appellant’s argument is
predicated on speculation and unsupported assertions. For example,
Appellant argues “[i]f the single mass 5 were divided into multiple masses
and one of the multiple masses was moved to the specific location [in order
to correct the mass distribution imbalance] the imbalance would not be
corrected.” Reply Br. 4. Yet this argument depends on the target location
for a single mass being the same as the target location for a fraction of that
mass. There is no justification offered for this assumption, and we reject it.
Neither the Examiner nor the ordinarily skilled artisan is required to abandon
common sense. If only part of weight 5 in Wirthmann is being moved in
order to accomplish vibration dampening, it is self-evident that the location
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of that part of the weight would be different than if the entire weight were
being moved, and Appellant does not explain why such natural adjustment
would lie outside the realm of ordinary skill in the art.
Appellant also argues that the Examiner has shifted the burden of
factually supporting a prima facie case of obviousness. Reply Br. 4. The
argument asserts that the Examiner “attempted to shift the initial burden
on[to] the Appellant to show why Wirthmann should not be modified” by
commenting “Appellant seems to be arguing that Wirthmann is by default
perfect and needs no modification.” Id. (quoting Ans. 18.) We disagree.
The Examiner was responding to an argument made by Appellant and never
shifted the burden of making a prima facie case of obviousness to Appellant.
The Examiner made clear that it was not necessary to add more weight or
mass to Wirthmann in order to meet the limitations of claim 8. Ans. 18
(“This need not necessitate adding additional weight and mass.”). As
discussed above, the Examiner established a prima facie case of
obviousness, and based on the arguments and evidence before us, Appellant
has failed to persuade us that any of the Examiner’s findings were in error.
Rejection VII
Appellant made no argument concerning claim 15. Appeal Br. 3—11.
Accordingly, the rejection of claim 15 is summarily affirmed.
DECISION
The Examiner’s decision rejecting claims 1—8, 10, 11, and 13—17 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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