Ex Parte Sveen

Patent Trial and Appeal Board

May 16, 2017

11919887 (P.T.A.B. May. 16, 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.
11/919,887 02/12/2008 Dagfinn Sveen 2007 1953A 7328
513 7590 05/18/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
05/18/2017 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAGFINN SVEEN
Appeal 2015-006030
Application 11/919,887
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 13 and 15—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2015-006030
Application 11/919,887
THE INVENTION
Appellant’s invention relates to an anchoring arrangement for a
floating wind turbine. Spec. 1. Claim 13, reproduced below, is illustrative
of the subject matter on appeal.
13. A floating wind turbine installation comprising:
an elongate floating cell;
a tower arranged over the floating cell;
a generator mounted on the tower, the generator being
rotatable in relation to a wind direction;
a wind rotor fitted to the generator; and
an anchor line arrangement comprising a plurality of anchor
lines fixed at first ends thereof to anchor points, respectively,
wherein:
each of the anchor lines extends from the respective
anchor point to a fixing point at a second end of the anchor
line,
each of the anchor lines is connected to the floating cell
by at least two further lines that are connected to the
respective fixing point at first ends thereof and to the floating
cell at second ends thereof,
the fixing points being located at a distance from the
floating cell such that the two further lines, extending
between the respective fixing point and the floating cell, slant
outwards so as to form a delta-shaped arrangement.
The Examiner relies upon the following as evidence in support of the
THE REJECTIONS
rejections:
Daniell
Harvey
Yashima
Sankrithi
Tatsuya
US 3,082,608
US 3,837,308
US 4,155,673
US 5,404,868
Mar. 26, 1963
Sept. 24, 1974
May 22, 1979
Apr. 11, 1995
July 5, 2002JP2002-188557A
2
Appeal 2015-006030
Application 11/919,887
The following rejections are before us for review:
1. Claims 13, 16—22, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tatsuya (hereinafter JP 557) and Harvey.
2. Claim 15 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over JP 557, Harvey, and either Daniell or Sankrithi.
3. Claim 23 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over JP 557, Harvey, and Yashima.
OPINION
Unpatentability of Claims 13, 16—22, and 24
over Tatsuya JP 557 and Harvey
Appellant argues claims 13, 16—22, and 24 as a group. Appeal
Br. 4—13. We select claim 13 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2016).
The Examiner finds that JP 557 discloses all of the elements of
claim 13 substantially as claimed except for each anchor line being
connected to a corresponding fixing point by at least two lines that are, at
their second ends, connected to the floating cell, and extending with an
outward slant forming a delta-shape. Final Action 2—3. The Examiner relies
on Harvey as supplying the elements missing from JP 557. Id. at 3. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to modify JP 557 by the teachings
of Harvey’s anchor line arrangement to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to keep the wind turbine tower in position with minimal movement
under the effects of tide, waves or wind. Id.
3
Appeal 2015-006030
Application 11/919,887
Appellant traverses the Examiner’s rejection and presents three
arguments that are summarized on page 13 of the Appeal Brief, namely:
a) Harvey is non-analogous art;
b) Even if Harvey is treated as analogous art, a person of ordinary
skill in the art would not be taught anything about the problem to
be solved;
c) the Examiner engaged in improper hindsight.
Appeal Br. 13.
Appellant supports the non-analogous art argument with declaration
testimony from Finn Gunnar Nielsen, dated March 2, 2014. Appeal Br. 5;
Nielsen Decl. Appellant analogizes the facts of this case to that of In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011) in which the Federal Circuit reversed
a decision by the Board.1 Appellant argues that Harvey is not from the same
field of endeavor as Appellant’s invention. Appeal Br. 6. Similarly,
Appellant argues that Harvey is not reasonably pertinent to the problem to
be solved. Id. Appellant considers the problem to be solved as yawing by
an elongate floating wind turbine. Id.
Appellant argues that Harvey has a hemispherical shape with a
diameter that is approximately twice that of its height. Appeal Br. 7.
Appellant argues that Harvey focuses on minimizing roll and pitch motion,
does not discuss the heave motion of a hemisphere, and does not address the
“yaw” problem. Id. Appellant concludes that Harvey is utterly unlike a
1 The outcome in Klein turned on whether certain references relied on by the
Examiner in rejecting the claims were analogous art. Id.
4
Appeal 2015-006030
Application 11/919,887
floating wind turbine in shape and size and, therefore, has different
hydrodynamic properties. Id.2
In response, the Examiner takes the position that Harvey and JP 557
are in the same field of endeavor. Ans. 3. In this regard, the Examiner
considers that the field of endeavor is anchoring and mooring of offshore
floating structures. Id. The Examiner disagrees with Appellant’s position
that Harvey is non-analogous simply because its floating structure differs in
size and shape from the elongated shape of a floating wind turbine. Id.
The Examiner takes the position that a prior art reference may be
analogous even if it does not address the same problem as the current
invention. Id. at 4. In this regard, the Examiner notes that Harvey was not
combined with JP 557 to control yaw motions of an elongate wind turbine.
Id. Instead, according to the Examiner, Harvey was combined to simply
replace one known element (anchoring/mooring system) for another to
obtain a predictable result. Id.
The teaching extracted from Harvey is how to anchor/moor a
floating structure. Using the anchoring/mooring system taught
by Harvey in place of the anchoring/mooring system disclosed
by Japanese document keeps the tower precisely in position
(held to a minimum horizontal or translation movement) under
the effects of tide, waves or wind .... The fact that appellant
has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be
obvious.
2 Appellant also takes issue with the Examiner’s determination that Harvey
is from the same field of endeavor based on its patent classification that
appears on the first page of Harvey. Appeal Br. 10-12. We decline to take
up this issue as we decide this appeal without reaching the question of
whether patent classification is evidence of whether a patent is from the
“same field of endeavor” for purposes of an analogous art determination.
5
Appeal 2015-006030
Application 11/919,887
Ans. 4, citing Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
In reply, Appellant argues that the subject matter disclosed in
Appellant’s Specification supports a field of endeavor that is “far narrower”
than that determined by the Examiner. Reply Br. 2—3. Appellant also takes
the position that it is not sufficient for a reference to be within the same field
of endeavor, but that consideration of both prongs (i.e., field of endeavor and
reasonably pertinent to the problem to be solved) is necessary to establish
that art is analogous. Id. at 3.
A reference qualifies as prior art for a determination under § 103
when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992).
Two separate tests define the scope of analogous prior 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 Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is
reasonably pertinent if... it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” Clay, 966 F.2d at 659. “If a reference disclosure
has the same purpose as the claimed invention, the reference relates to the
same problem, and that fact supports use of that reference in an obviousness
rejection.” Id. Whether a prior art reference is “analogous” is a question of
fact. Innovention Toys, LLC v. MCA Entertainment, Inc., 637 F.3d 1314,
1321 (Fed. Cir. 2011).
As an initial matter, we reject Appellant’s position that consideration
of both prongs of the Bigio/Clay test is “necessary” to reach a determination
6
Appeal 2015-006030
Application 11/919,887
that a reference is analogous. Reply Br. 3. Appellant cites no legal authority
to support this position and, indeed, we are not aware of any. The two
analogous art tests are considered to be separate tests.
The PTO and its reviewing courts have developed and applied a
two-step “test” to determine whether a prior art reference is
“analogous” art and therefore evidence that may be considered
with respect to a question of obviousness under § 103. In re
Wood, 599 F.2d 1032 (CCPA 1979).
Step 1 requires an answer to the following question: “Is the
reference within the field of the inventor’s endeavor?” If the
answer is “yes,” then the reference is “analogous” and therefore
“admissible” evidence.
If the answer is “no”, then Step 2 requires an answer to the
following question: “Is the reference reasonably pertinent to
the particular problem the inventor was trying to solve?” If the
answer is “yes”, then the reference is analogous and therefore
“admissible” evidence
Ex parte Dobransky, 2013 WL 2139930 *3 (PTAB 2013); see also Bigio,
supra.
We agree with the Examiner that Harvey and Appellant’s invention
are within the same field of endeavor, namely, anchoring/mooring of
offshore floating structures. Ans. 3. Mankind has been anchoring floating
vessels at sea, such as sailing ships, for centuries. Such floating vessels are
subject to essentially the same forces of nature, i.e., wind and waves. While
it may be true that vessels of different sizes and shapes may react somewhat
differently to the same set of conditions, we are of the opinion that a person
of ordinary skill would be familiar with systems that are applicable for a
variety of product applications and would understand and appreciate that at
least some systems would be useful for more than one type of vessel. Thus,
we think that a person of ordinary skill in the art, faced with a problem of
7
Appeal 2015-006030
Application 11/919,887
anchoring/mooring a new type of vessel, would look to existing
anchoring/mooring systems for other types of vessels. In summary, we are
not persuaded by Appellant’s argument that anchoring/mooring systems for
a narrow, elongated vessel is a different field of endeavor from that of
anchoring/mooring systems for other types of vessels, such as ships or large,
but stationary floating platforms.
Furthermore, we are not persuaded by Appellant’s argument or
declaration testimony that Harvey is non-analogous art because it is directed
to solving a different problem than the yaw problem addressed by
Appellant’s invention. Appeal Br. 6, Nielsen Dec. In that regard, we choose
to follow the approach and rationale expressed by the Board in Dobransky,
which we find to be persuasive in response to Appellant’s arguments that
Harvey is not directed to the same problem that is purportedly solved by
Appellant’s invention. See Dobransky at *3—6. In Dobransky, the Board
relied heavily on the following language from KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419-420 (2007), as do we in the instant case.
In determining whether the subject matter of a . . . claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
. . . [unpatentable] under § 103. One of the ways in which a
patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for
which there was an obvious solution encompassed by the
patent’s claims.
Id. (emphasis added). The Board, in Dobranksy, added:
The reason for declining to allow a claim for subject matter that
would have been obvious under § 103 is based on the
proposition that such allowance withdraws from the public
domain subject matter that those skilled in the art should be free
8
Appeal 2015-006030
Application 11/919,887
to use. Graham v. John Deere Co., 383 U.S. at 6 (patents
whose effects are to remove existent knowledge from the public
domain, or to restrict free access to materials already available
should not be issued). See also (1) In reKubin, 561 F.3d 1351,
1357-8 (Fed. Cir. 2009) (a patent on such a structure would
remove from the public that which is in the public domain by
virtue of its inclusion in, or obvious from, the prior art) and (2)
In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir.
2007) (obvious variants of prior art references are themselves
part of the public domain).
It may be true that Statton and applicant set out to solve
different problems. However, those practicing the Dobransky
invention should be free to make a modification to that
invention by including in the Dobransky isocyanate-reactive
composition the propylene carbonate described by Statton. By
doing so, one skilled in the art would have expected to
minimize discoloration. Allowance of Claim 1 on appeal on the
record before us would preclude those skilled in the art from
practicing an obvious modified Dobransky invention. As KSR
holds, § 103 is designed to prevent that from happening.
Dobransky, at *5. For the reasons expressed above by the Board in
Dobransky, we find unpersuasive Appellant’s argument that Harvey is not
analogous art because it is directed toward solving a different problem than
the “yaw” problem that is purportedly solved by Appellant’s invention.
Figure 4 of Harvey shows an anchor line at element 128, a fixing
point at element 124, and two further lines 124 extending between the fixing
point and the vessel. See Harvey, Fig. 4. Appellant would have us withdraw
from the public domain use of this known mooring arrangement for floating
wind turbines. “As KSR holds, § 103 is designed to prevent that from
happening.” Dobransky, *5. We determine that Harvey is analogous art that
is available for use by the Examiner to be combined with JP 557 in an
9
Appeal 2015-006030
Application 11/919,887
obviousness analysis with respect to the subject matter of Appellant’s
invention.
Appellant also argues that a person of ordinary skill in the art would
not modify the mooring system of JP 557, because it already has a suitable
mooring system. Reply Br. 3. This argument is not persuasive as the
adequacy of an existing system does not preclude and would not discourage
a person of ordinary skill in the art from attempting to improve on the prior
art. See Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) (the desire to improve is universal).
Furthermore and as previously discussed, we find unpersuasive Appellant’s
argument that a person of ordinary skill in the art would not look to Harvey,
because it is addressed to solving a different problem than that of
Appellant’s invention. Appeal Br. 13. See KSR Inti Co. v. Teleflex Inc.,
550 U.S. 398, 418-19, 420 (2007) (it is error to look “only to the problem the
patentee was trying to solve”); In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006) (a skilled artisan need not be motivated to combine the prior art for
the same reason as an inventor).
Finally, Appellant argues that, absent hindsight, it is difficult to see
why one of ordinary skill would have been led by the teachings of Harvey to
replace the mooring system of JP 557. Reply Br. 3^4. The Examiner finds
that a person of ordinary skill in the art would modify JP 557 with Harvey to
keep the wind tower in position under the effects of tide, waves, or wind.
Final Action 3. This finding is supported by a preponderance of the
evidence as Harvey intrinsically provides a motivation to use its system with
floating vessels.
Horizontal movement or translation of the platform in response
to wave motion is held to a minimum by means of special
10
Appeal 2015-006030
Application 11/919,887
mooring systems to be described in more detail later. These
mooring systems retain the platform at the selected site without
interfering with the physical characteristics noted above which
impart pitch and roll stability to the floating plant.
Harvey, col. 2,1. 64 — col. 3,1. 2. A hindsight argument is of no moment
where, as here, the Examiner provides a sufficient, non-hindsight reason to
combine the references. See In re Cree, Inc., 818 F.3d 694, 702, n.3 (Fed.
Cir. 2016).
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claims
13, 16—22, and 24 over JP 557 and Harvey.
Unpatentability of Claims 15 and 23
over Combination Based on JP 557 and Harvey
Appellant does not argue for the separate patentability of claims 15
and 23 apart from arguments presented with respect to claim 13 which we
have previously considered. See Appeal Br. 3—14. Thus, we understand
Appellant to be relying on the same arguments presented for claim 13,
which, as for the reasons discussed above, fail to apprise us of error.
Consequently, we sustain the rejections of claims 15 and 23.
DECISION
The decision of the Examiner to reject claims 13 and 15—24 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)(l)(iv).
AFFIRMED
11