Ex Parte Stiesdal

Patent Trial and Appeal Board

Jul 10, 2017

13578915 (P.T.A.B. Jul. 10, 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.
13/578,915 08/14/2012 Henrik Stiesdal 2010P03649WOUS 2577
22116 7590 07/12/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
BELL, WILLIAM P
Orlando, EL 32817 ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
07/12/2017 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 HENRIK STIESDAL
Appeal 2016-005240
Application 13/578,9151
Technology Center 1700
Before ROMULO H. DELMENDO, AVELYN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 11—14
and 16—19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as “Siemens Aktiengesellschaff ’
(Appeal Brief filed October 29, 2015, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 4—7; Reply Brief filed April 14, 2016, hereinafter “Reply Br.,”
2—5; Final Office Action entered June 12, 2015, hereinafter “Final Act.,” 2—
8; Examiner’s Answer entered April 5, 2016, hereinafter “Ans.,” 2-4.
Appeal 2016-005240
Application 13/578,915
BACKGROUND
The subject matter on appeal relates to a mold for molding a wind
turbine blade and to a method of molding a wind turbine blade
(Specification, hereinafter “Spec.,” 12; Abstract). According to the
Appellant, the mold comprises a “solid non-stick lining,” such as a layer of
polytetrafluoroethylene (PTFE) material, that “makes a [waxy or other semi­
solid] release agent unnecessary and, after curing, the wind turbine blade can
easily be detached from the non-stick lining” {id. H 8, 9, 13). The Appellant
explains that “[t]he solid non-stick lining can be applied just once to the
inside surface of the mould, which can then be used multiple times without
having to replace the non-stick lining” {id. 113).
Representative claim 11 is reproduced from page 8 of the Appeal
Brief (Claims Appendix), with key limitations highlighted in bolded italics,
as follows:
11. A mould for moulding a wind turbine blade using a
reinforcement material lay-up comprising:
a first mould section having a profile of a wind turbine
pressure side;
a second mould section having a profile of a wind turbine
suction side;
a solid non-stick lining applied directly to an inside
surface of the mould,
wherein the reinforcement material lay-up comprises a
reinforcing material and a matrix material,
wherein the material properties of the non-stick lining
are chosen to prevent the matrix material from bonding with
the non-stick lining of the mould when the reinforcement
material lay-up is assembled on the solid non-stick lining,
wherein the mould is used in a vacuum-assisted resin
transfer moulding process in which the matrix material
comprises an epoxy resin.
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Application 13/578,915
REJECTIONS ON APPEAL
On appeal, the Examiner maintains three rejections under pre-AIA
35 U.S.C. § 103(a), which are listed as follows:
I. Claims 11—14, 16, and 17 as unpatentable over Stiesdal et
al.3 (hereinafter “Stiesdal”) and Bocoviz et al.4
(hereinafter “Bocoviz”);
II. Claim 18 as unpatentable over Stiesdal, Bocoviz, and
Seymour5; and
III. Claim 19 as unpatentable over Stiesdal, Bocoviz, and
Rigas et al.6
(Final Act. 2—8; Ans. 2—5.)
DISCUSSION
A. Grouping of Claims
The Appellant relies on the same arguments for all claims subject to
Rejection I, focusing only on the two independent claims—i.e., claims 11
and 17 collectively (Appeal Br. 4—6). Therefore, pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv), we confine our discussion of Rejection I to claim 11,
which we select as representative. As provided by this rule, claims 12—14,
16, and 17 stand or fall with claim 11. In addition, the Appellant does not
provide any additional arguments for Rejections II and III but instead relies
on the same arguments offered against Rejection I (id. at 6). Therefore, our
ruling on claim 11 controls our decision for all claims on appeal.
3 EP 1 310 351 Al, published May 14, 2003.
4 US 5,605,440, issued February 25, 1997.
5 US 2,596,179, issued May 13, 1952.
6 US 7,147,818 Bl, issued December 12, 2006.
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Application 13/578,915
B. The Examiner’s Position
The Examiner finds that Stiesdal describes a mold for molding a wind
turbine blade including every limitation recited in claim 11 except for a
“non-stick lining” as specified in the claim (Final Act. 2—3). The Examiner
found further, however, that Bocoviz teaches such a “non-stick lining” in the
form of a layer of PTFE material applied directly to an inside surface of the
mold in order to prevent undesired bonding between the mold and the
material being molded {id. at 3). Based on these findings, the Examiner
concluded that “[i]t would have been obvious to one of ordinary skill in the
art... to have modified the mold taught by Stiesdal by providing the mold
cavities with a solid non-stick polytetrafluoroethylene lining [as taught in
Bocoviz] for the benefit of ensuring good mold release” {id.).
C. The Appellant’s Contentions
The Appellant contends that Bocoviz relates to helicopter vanes made
by using an open mold process or resin transfer molding (RTM) process—
not a vacuum-assisted resin transfer molding (VARTM) process for making
a wind turbine blade (Appeal Br. 4). The Appellant further contends that
Bocoviz’s method involves heating the mold whereas “[w]hen using
VARTM [as in the current invention], there is no need to heat the [mold]”
{id.). The Appellant argues that the claimed mold “would not be able to
withstand a baking exposure nor would it be feasible due to the size of the
[mold] (Bocoviz’s vanes are relatively small, 0.5—1 meter, compared to
Applicant’s blade which are between 52—75 meters)” {id. at 4—5). Thus,
according to the Appellant, “[o]ne skilled in the art would not use Bocoviz’s
method to cast a wind turbine blade” because “[u]sing Bocoviz’s method
would . . . change the principle of operation of Stiesdal” {id. at 5).
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Application 13/578,915
Furthermore, the Appellant argues that Bocoviz is not analogous art because:
(i) Bocoviz’s helicopter vanes made by RTM are relatively small in
comparison to the Appellant’s wind turbine blades made by using VARTM;
and (ii) the problem addressed by Bocoviz (flow straightening) is not
reasonably pertinent to the problem faced by the Appellant (preventing the
matrix material from bonding with the non-stick lining of the mold) {id. at
5-6).
D. Analysis
The Appellant’s arguments fail to identify any reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
(i) Whether Bocoviz is Analogous Art
Because the Examiner’s rejection cannot be sustained without
Bocoviz, we start our analysis by addressing whether Bocoviz is analogous
prior art. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (explaining that the
non-analogous art test considers the threshold question whether a prior art
reference is too remote to be treated as prior art).
The two separate tests for determining whether a prior art reference is
analogous are as follows: (i) whether the art is from the same field of
endeavor, regardless of the problem addressed; and (ii) if the reference is not
within the inventor’s field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved. Id.
at 658—659. The same field of endeavor test “for analogous art 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 1320, 1325 (Fed. Cir. 2004) (reference
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Application 13/578,915
describing a toothbrush found to be in the same field of endeavor as a claim
to a hairbrush based on findings regarding function and structural similarity).
With respect to the second test, a reference is reasonably pertinent to the
particular problem with which the inventor is involved if it addresses the
same or similar problem. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1380-81 (Fed. Cir. 2007) (prior art disclosing springs as part of a
counterbalancing mechanism in a folding bed is reasonably pertinent to an
application describing a gas spring used as part of a lift assist assembly in a
claimed treadmill).
Applying each of these tests, we agree with the Examiner’s
determination (Ans. 4) that Bocoviz is analogous art. In its broadest context,
the Appellant’s Specification places no limitation on the particular technique
in which the mold can be used (Spec. Tflf 2, 6—10, 16). Nor, as the Examiner
points out (Ans. 2), does the claim when read in light of the Specification
place any limits on the size of the claimed mold or the wind turbine blade
produced from such a mold (id. ). Given the structural similarities between
Bocoviz’s mold and the claimed mold, we find that Bocoviz is in the same
field of endeavor as the Appellant’s disclosed field of endeavor. Bigio, 381
F.3d at 1326 (upholding the Board’s finding that toothbrush art falls within
the same field of endeavor as claimed hair brush art because the prior art’s
toothbrush may easily be used for brushing hair in view of the size of the
bristle segment and arrangement of the bristle bundles described in the
reference).
Even if Bocoviz cannot be considered to be in the same field of
endeavor, Bocoviz is reasonably pertinent because it addresses the same or
similar problem addressed by the Appellant. As the Appellant
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acknowledges, the purpose of the “non-stick lining” recited in claim 11 is to
prevent the matrix material from bonding with the non-stick lining of the
mold (Appeal Br. 6). Bocoviz addresses the same or similar problem by
covering each of the internal mold cavities 62a and 62b with “a film of
adhesive PTFE” to ensure good mold release (col. 15,11. 27—38). ICON
Health, 496 F.3d at 1380-81.
For these reasons, we determine that Bocoviz is analogous art.
(ii) Reason to Combine Stiesdal and Bocoviz
The Appellant does not dispute the Examiner’s findings (Final Act. 2—
3) regarding Stiesdal’s scope and content (Appeal Br. 4—6). Specifically,
Stiesdal teaches a mold for producing windmill blades made from composite
materials such as carbon fiber-reinforced epoxy (H 1, 11—12). Stiesdal
further teaches that the windmill blades are formed by vacuum injection of
thermosetting resin (|| 22, 27—28, 33) and that the mold may be treated with
a suitable release agent flflf 22, 24, 26). Thus, we find no error in the
Examiner’s finding that Stiesdal discloses every limitation recited in
claim 11 except for the “non-stick lining.”
But given that Stiesdal discloses the use of mold release agents, a
person having ordinary skill in the art would have found it obvious to cover
Stiesdal’s mold parts with Bocoviz’s mold release material in the form of an
adhesive PTFE film in order “to ensure good [mold] release” as suggested
by Bocoviz (Bocoviz, col. 15,11. 27—38), thus arriving at a mold
encompassed by claim 11. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007) (“[I]n many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
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Application 13/578,915
Although the Appellant argues that Bocoviz’s mold is used in RTM,
as distinguished from VARTM, we find no error in the Examiner’s position
that “the rejection does not propose using the Bocoviz’s method to cast a
wind turbine blade, but instead to use the non-stick mold lining of Bocoviz
in the method of Stiesdal” (Ans. 3). Here, the Appellant does not provide us
with any objective evidence or persuasive technical reasoning why a person
having ordinary skill in the art would have expected Bocoviz’s PTFE mold
release material to be unsatisfactory or unsuitable in Stiesdal in which
vacuum is applied. See id. (“Such a modification would not render Stiesdal
unsuitable for its intended purpose because the same product would be made
using essentially the same method, with the only difference being an
improvement in mold release.”). As the Examiner states aptly, the relevant
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art—not whether the features of a secondary
reference may be bodily incorporated into the structure of a primary
reference. Id. (citing In re Keller, 642 F.2d413, 425 (CCPA 1981)).
For the foregoing reasons, we sustain the Examiner’s rejections.
SUMMARY
Rejections I—III are affirmed. Therefore, the Examiner’s final
decision to reject claims 11—14 and 16—19 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)(1).
AFFIRMED
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