Ex Parte Ollgaard

Board of Patent Appeals and Interferences

Sep 14, 2009

10157286 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BORGE OLLGAARD
____________

Appeal 2009-004568
Application 10/157,286
Technology Center 3600
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Decided: September 14, 2009
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Borge Ollgaard (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-3, 5-11, 13-15, 17-23, and 25.
Claims 4, 12, 16, and 24 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention is directed toward a method and a device for
mounting components to the interior of a wind turbine tower by using a
magnetic and a mechanical attachment. Spec. 1, ll. 4-5; Spec. 3, ll. 4-5;
Spec. 4, ll. 6-8.
Claim 17 is representative of the claimed invention and reads as
follows:
17. A system of mutually attachable members,
comprising at least one magnetic wind
turbine tower portion, at least one
suspension unit, said at least one suspension
unit comprising at least one permanent
magnetic portion and at least one
mechanical fixation portion, said at least one
permanent magnetic portion and said at least
one mechanical fixation portion facilitating
magnetic and mechanical attachment of at
least one suspension unit to said at least one
wind turbine tower portion.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ghandehari US 4,601,754 Jul. 22, 1986
Meyer US 5,192,155 Mar. 9, 1993
Maliszewski US 6,470,645 B1 Oct. 29, 2002

The following rejections are before us for review:1
1. The Examiner rejected claims 1-3, 5-10, 13-15, 17-23, and 25 under
35 U.S.C. § 103(a) as unpatentable over Maliszewski and Meyer.2
2. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Maliszewski, Meyer, and Ghandehari.

THE ISSUES
The Examiner found that Maliszewski discloses a steel wind turbine
tower that allows entry to its interior for maintenance. Ans. 3. However, the
Examiner acknowledges that Maliszewski does not disclose complete access
to the inside of the tower because a ladder is positioned on only one side of
the tower’s interior. Id. The Examiner then turns to Meyer to show a
gripping and climbing device that uses both a magnetic and a mechanical
attachment. Ans. 3, 4. Accordingly, the Examiner concluded that:

1 Since the Examiner has omitted in the Examiner’s Answer the
rejection of claims 2, 3, 5, and 7 under 35 U.S.C. § 112, second paragraph,
as indefinite, we shall consider that the rejection has been withdrawn. Br. 9.
See also, Final Rejection 2, mailed Dec. 19, 2006.
2 Although the heading of the rejection omits claim 7, because the
Examiner refers to claim 7 in the body of the rejection, we have considered
the omission of claim 7 in the heading as merely a typographical error.
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It would have been obvious to one having ordinary
skill in the art at the time the invention was made
to modify Maliszewski by using the gripper device
of Meyer in order to make repairs in places of the
tower interior not near the ladder, since the height
of the tower makes portions of the interior
dangerous to maintain.
Ans. 3.
Appellant argues that in contrast to Maliszewski, which discloses
welding a ladder assembly and platforms, i.e., elements, to the interior of a
wind turbine tower, Appellant’s claimed invention requires attachment of
such elements to the interior of the wind turbine tower by means of magnetic
attraction forces and mechanical fixation. Br. 11. Appellant further argues
that Meyer also does not disclose magnetic and mechanical attachment and
fixation because Meyer “describes temporary contact of magnet 16 and
dowel pin 36 with wall surface 12.” Br. 14, 16. (emphasis added).
Moreover, Appellant argues that the foot sling 42 of Meyer does not
constitute a “ladder” as understood by a person of ordinary skill in the art.
Br. 14. As such, Appellant argues that because neither Maliszewski nor
Meyer discloses magnetic and mechanical attachment and fixation of
elements to the interior of a wind turbine tower, there is no suggestion or
motivation to combine the teachings of Maliszewski and Meyer. Br. 16.
Hence, according to Appellant, there is no likelihood of success in
combining the teachings of Maliszewski and Meyer. Br. 17.
In response, the Examiner takes the position that Meyer discloses a
“ladder part,” namely a “step.” Ans. 6. The Examiner further notes that
although the attachment of magnet 16 and dowel pin 36 with wall surface 12
of Meyer is temporary, nonetheless, it constitutes an attachment. Id.
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Accordingly, the issues raised in this appeal are as follows:
1. Has Appellant demonstrated that the Examiner erred in finding that
the foot sling 42 of Meyer constitutes an “element” such as a “ladder part”?
2. Has Appellant demonstrated that the Examiner erred in finding that
the magnet 16 and the dowel pin 36 of Meyer constitute “means of magnetic
attraction forces” and “mechanical fixation”?
3. Has Appellant demonstrated that the Examiner’s proposed
modification of Maliszewski to include the gripper of Meyer is not
supported by some articulated reasoning with rational underpinning?

SUMMARY OF DECISION
We AFFIRM.
PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 417-418. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.")

OPINION
Issue (1)
Appellant argues the rejection under 35 U.S.C. § 103(a) of claims 1-3,
5, and 6 together as a group. Br. 11, 15. Accordingly, we have selected
claim 1 as the representative claim to decide the appeal, with claims 2-3, 5,
and 6, standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2008).
We begin by construing the limitation “ladder parts.” Appellant’s
Specification does not expressly define the terms “ladder” and “parts” or
otherwise indicate that these terms are used in a manner other than their
ordinary and customary meaning. Accordingly, we construe each of these
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terms in accordance with its ordinary and customary meaning. An ordinary
and customary meaning of the term “ladder” is “two long sidepieces joined
at intervals by crosspieces on which one may step.” MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997). An ordinary and customary
meaning of the term “part” is “a constituent member of a machine or other
apparatus.” Id. Accordingly, an ordinary and customary meaning of the
limitation “ladder part,” is a constituent member of a ladder, which is either
one of the sidepieces or crosspieces (steps) of the ladder. It is our finding
that, Meyer discloses a foot sling 42 or a foot gripper 44, 46 for attaching
and reattaching the gripper 10 to the wall surface 12. Meyer, col. 2, ll. 49-57
and figs. 1 and 3. As shown in Figure 2 of Meyer, we further find that the
foot sling 42 includes a step portion where a person can step on and be
supported by the gripper assembly 10. Similarly, when a person uses a
ladder, the person steps on the crosspiece and is supported by the ladder.
Hence, we agree with the Examiner that the step portion of Meyer’s foot
sling 42 constitutes a “ladder part,” as required by claim 1.

Issue (2)
It is our finding that Meyer discloses a gripper assembly 10 for
climbing ferromagnetic surfaces (e.g., steel) including a magnet 16 and a
dowel pin 36 for attaching the gripper to a wall surface 12 such that
downward sliding movement of the gripper 10 is prevented. Meyer, col. 2,
ll. 25-41 and 49-57 and fig. 1. Although we appreciate Appellant’s
argument that the gripper 10 of Meyer is attached temporarily, we note that
claim 1 does not distinguish between a temporary and a permanent
attachment. It is well established that limitations not appearing in the claims
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cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). As long as the gripper of Meyer is attached to the wall 12,
Meyer’s magnet 16 and dowel pin 36 satisfy the limitations of a magnetic
and mechanical attachment, as required by claim 1. In this case, the magnet
16 attaches the Meyer gripper assembly 10 to the wall 12. The dowel pin 36
creates a mechanical engagement with the wall 12 such that the downward
sliding movement of the gripper 10 of Meyer is prevented. Hence, we find
that the magnet 16 attaches the gripper to the wall (magnetic attachment)
and the dowel pin 36 fixes the gripper in the attached location (mechanical
fixation). Accordingly, we find that the dowel the magnet 16 and the dowel
pin 36 constitute a magnetic attachment and mechanical fixation, as required
by claim 1.

Issue (3)
With respect to Appellant’s argument that the disclosure of
Maliszewski and Meyer does not provide a suggestion or motivation to
combine their teachings (Br. 16), we note that while the requirement of
demonstrating a teaching, suggestion, or motivation (the TSM test
established by the Court of Customs and Patent Appeals) to combine known
elements in order to show that the combination is obvious may be “a helpful
insight,” it cannot be used as a rigid and mandatory formula. KSR at 419.
In this case, it is our finding that Maliszewski discloses a steel wind
tower turbine having a ladder assembly 27 disposed therein. Maliszewski,
col. 2, ll. 52-54 and 64-65; col. 4, ll. 27-29; and fig. 9. According to the
Examiner, Maliszewski does not disclose complete access to the inside of
the tower because the ladder assembly 27 is positioned on only one side of
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the tower’s interior. Ans. 3. The Examiner concludes that it would have
been obvious for a person of ordinary skill in the art to include the gripper
device of with the steel tower of Maliszewski in order to make repairs to the
interior of the tower located away from the ladder. Id. We further find that
Meyer discloses a gripper 10 for climbing ferromagnetic surfaces (e.g.,
steel). Meyer, Abstract. Accordingly, Meyer would have prompted a person
of ordinary skill in the art to include the gripper of Meyer with the steel
tower of Maliszewski in order to make repairs to the interior of the tower
located away from the ladder. Thus, we find the Examiner has articulated
reasoning with rational underpinning to support the conclusion that the
provision of Meyer’s gripper to the steel tower of Maliszewski would have
been obvious.
Lastly, given that the combined teachings of Maliszewski and Meyer
disclose all limitations of claim 1, we see no merit to Appellant’s contention
that the rejection of claim 1 is improper due to a lack of a reasonable
expectation of success based on Maliszewski and Meyer not disclosing all
limitations of claim 1. Br. 17.
For the foregoing reasons, Appellant’s arguments do not persuade us
that the Examiner erred in rejecting claim 1 as unpatentable over the
combined teachings of Maliszewski and Meyer. Accordingly, the rejection
of claim 1, and claims 2-3, 5, and 6, standing or falling with claim 1, is
sustained.
With respect to claims 8-10, 13-15, 17-23, and 25, Appellant makes
similar arguments as presented with respect to the rejection of claims 1-3, 5,
and 6 over Maliszewski and Meyer. Br. 15, 16. Accordingly, for the reasons
discussed above, these arguments are not persuasive. Hence, the rejection of
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claims 8-10, 13-15, 17-23, and 25 over Maliszewski and Meyer is likewise
sustained.
Finally, with respect to claims 7 and 11, Appellant does not make any
separate arguments. Br. 17, 18. Therefore, the rejections of claims 7 and 11
under 35 U.S.C. § 103(a) as unpatentable over Maliszewski and Meyer and
over Maliszewski, Meyer, and Ghandehari, respectively, are also sustained.

CONCLUSIONS
1. Appellant has failed to demonstrate that the Examiner erred in finding
that the foot sling 42 of Meyer constitutes an element such as a
“ladder part.”
2. Appellant has failed to demonstrate that the Examiner erred in finding
that the magnet 16 and the dowel pin 36 of Meyer constitute means of
magnetic attraction forces and mechanical fixation.
3. Appellant has failed to demonstrate that the Examiner’s proposed
modification of Maliszewski to include the gripper of Meyer is not
supported by some articulated reasoning with rational underpinning.

DECISION
The Examiner’s decision to reject claims 1-3, 5-11, 13-15, 17-23, and
25 is affirmed.
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)(1)(iv) (2007).

AFFIRMED

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