Ex Parte TredeDownload PDFPatent Trial and Appeal BoardDec 21, 201612593198 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 12/593,198 02/17/2010 Alf Trede SEE-19101 4216 40854 7590 12/23/2016 RANKIN, HILL & CLARK LLP 38210 GLENN AVENUE WILLOUGHBY, OH 44094-7808 EXAMINER SETLIFF, MATTHIEU F ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): 40854@rankinhill.com spaw @ rankinhill. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALF TREDE Appeal 2015-003127 Application 12/593,198 Technology Center 3600 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-12, 14-18, and 23-28.1 App. Br. 5. Claims 13 and 19-22 have been canceled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Page 5 of the Appeal Brief indicates the claims on appeal are claims 1-12, 14-18, and 22-28. However, the Claims Appendix at page 23 of the Appeal Brief indicates that claim 22 has been cancelled. Accordingly, we will consider the failure to include claim 22 as a cancelled claim at page 5 of the Appeal Brief to be an inadvertent error, and that claims 1-12, 14-18, and 23-28 are the claims before us on appeal. Appeal 2015-003127 Application 12/593,198 THE CLAIMED SUBJECT MATTER The disclosed subject matter “concerns a use or arrangement of intermediate connecting bodies for a connection of components of a wind turbine, a method for creating a connection of components of a wind turbine and a wind turbine.” Spec. ^ 2. Claims 1 and 28 are independent claims. Claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A connection of components (11, 12, 13) of a wind turbine, comprising: at least first and second components (11, 12, 13) of a wind turbine, to be connected to each other, each having contact areas facing toward each other, and in the connected state, the components (11, 12, 13) are or become secured to each other, the first and second components (11, 12, 13) each having a diameter greater than 0.5 m, wherein multiple intermediate connecting bodies (20) are arranged between the first component (11; 12) of the wind turbine and the second component (12; 13) of the wind turbine and the intermediate connecting bodies (20) form a segmented ring or parts of a segmented ring through the arrangement between the first and second component (11, 12, 13), wherein the second component is constructed in the form of a rotor hub or in the form of a transmission input shaft or in the form of a rotary bearing which can be arranged on a tubular tower of a wind turbine, wherein the intermediate connecting bodies (20) are designed with contact areas which are arranged opposite to the contact areas of the first and second component (11, 12, 13) and that on each contact area of the intermediate connecting bodies (20) arranged opposite to the contact areas of the first and second component, a coating that includes hard particles, in which the particle size is greater than 30 pm, is provided, where the coated contact area of the intermediate connecting bodies (20) has the effect of increasing the coefficient of friction when the connection is formed, and wherein the intermediate connecting bodies (20) define at least one through boring (27) that receives a fastener of a flange 2 Appeal 2015-003127 Application 12/593,198 connection (14, 19, 21) between the first and second components (11,12,13). REFERENCES RELIED ON BY THE EXAMINER Nichols Lindenthal McKay Torpey Lukschandel US 2,617,672 US 4,822,204 US 5,446,105 US 6,167,992 B1 US 6,347,905 B1 Nov. 11, 1952 Apr. 18, 1989 Nov. 14, 1995 Jan. 2, 2001 Feb. 19, 2002 READE Grit to Mesh to Microns to Inches Conversion Chart, Copyright 2016 Reade International Corp., http://www.reade.com/reade-resources/particle-measurement/43-grit- and-microgrit-grading-conversion-chart (hereinafter “READE Conversion Chart”) THE REJECTIONS ON APPEAL Claims 1-8, 10-12, 14-18, and 23-28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lindenthal, Lukschandel, Nichols, and McKay. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lindenthal, Lukschandel, Nichols, McKay, and Torpey. ANALYSIS The rejection of claims 1—8, 10—12, 14—18, and 23—28 as unpatentable over Lindenthal, Lukschandel, Nichols, and McKay Appellant presents similar arguments for independent claims 1 and 28 and further, Appellant does not present separate arguments for dependent claims 2-8, 10-12, 14-18, and 23-27. App. Br. 12-17. We select independent claim 1 for review with claims 2-8, 10-12, 14-18, and 23-28 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Lindenthal discloses a connection of components capable of being used in a wind turbine including several of the 3 Appeal 2015-003127 Application 12/593,198 limitations of claim 1. Final Act. 2-3. More particularly, the Examiner finds that Lindenthal discloses “first (1) and second (2) components” having contact areas facing toward each other, a ring-shaped “intermediate connecting body (7)” arranged between the first and second components, and a coating of hard particles “on at least one contact area” of the connecting body arranged opposite the contact areas of the first and second components. Final Act. 2-3. The Examiner relies on the additional teachings of Lukschandel, Nichols, and McKay for other limitations not “expressly disclosed” in Lindenthal. Final Act. 3-5. These other references will be discussed infra, including Appellant’s arguments concerning such additional references. Addressing Lindenthal, Appellant contends that Lindenthal fails to teach first and second components having contact areas that face toward each other. App. Br. 12-14. More specifically, Appellant contends that Lindenthal teaches “a coupling of two tubular coupling sections or halves 1, 2 that each have a flange 3,4. Each flange has a front planar face 3a, 4a that faces the other face.” App. Br. 13. Accordingly, Appellant contends that “Lindenthal teaches that the ‘two coupling sections thereby come into contact exclusively by way of the coated annular surface of the disks 7.’”2 App. Br. 13 (referencing Lindenthal 3:8-10 with emphasis added). Appellant further contends that “Lindenthal also teaches that a gap 12 should be present between the flanges 3 and 4 (See Col. 3, lines 4-7). As is considered apparent, if a gap is present, the flanges would not have contact areas that would face one another.” App. Br. 13; see also Reply Br. 5. 2 Appellant states that in Lindenthal, “the suggested contact area 3a and 6a do not contact one another.” App. Br. 13. 4 Appeal 2015-003127 Application 12/593,198 The Examiner responds by providing an annotated version of Figure 1 of Lindenthal pointing out that the planar face 3 a of component 1 and the planar face 6a of component 2 constitute contact areas that face one another. Ans. 16. The Examiner further notes that There is no requirement in the claim that the recited contact areas contact each other, only that the contact areas face toward each other (see for example lines 3—4 of claim 1 “at least first and second components . .. each having contact areas facing toward each other”). Ans. 16. The Examiner additionally reasons that the claimed contact areas of the first and second components are not in contact with each other “but rather, are in contact with the contact areas of the intermediate connecting bodies.” Ans. 16. This is consistent with the limitation in claim 1 “wherein multiple intermediate connecting bodies” “are arranged between” the first and second components. The Examiner further replicates the claim limitation “wherein the intermediate connecting bodies (20) are designed with contact areas which are arranged opposite to the contact areas of the first and second component.” Ans. 16-17 (emphasis added). Thus, the Examiner concludes, in reliance on Figure 2 of the originally filed disclosure, that “the contact areas facing toward each other of the first and second components (12, 13) are not in contact with each other, rather, they are in contact with an intermediate connecting body (20)” and, likewise, “the indicated contact areas of Lindenthal are in contact with at least the intermediate connecting body (7).” Ans. 17. We agree with the Examiner. First, as the Examiner points out, claim 1 merely require that the contact areas of the first and second components face toward each other, not that they contact one another. Second, the contact areas of the claimed first and second components are in contact with 5 Appeal 2015-003127 Application 12/593,198 the contact areas of the intermediate connecting bodies 20 just as the contact areas of the first and second components of Lindenthal are in contact with at least the intermediate connecting body 7. Appellant fails to apprise us of error in the findings, technical reasoning and conclusions reached by the Examiner regarding Lindenthal vis-a-vis the language of claim 1. In short, Appellant’s arguments regarding the teachings of Lindenthal are not persuasive of Examiner error. The Examiner further acknowledges that Lindenthal does not “expressly disclose” that a coating of hard particles is provided on “each” contact area of the intermediate connecting body. Final Act. 3. However, the Examiner relies on Lukschandel for disclosing a coating of hard particles “on each contact area of an intermediate element (2) between a connection of components in order to provide a friction increasing, reversible connection, which is free from play (Col. 2, L 18-20).” Final Act. 3—4. The Examiner concludes that it would have been obvious in light of Lukschandel to modify Lindenthal “to include a coating of hard particles on each contact area of the intermediate element [of Lindenthal] in order to provide a friction increasing, reversible connection, which is free from play.” Final Act. 4. In rebuttal, Appellant contends that Luckshandel [sic] merely teaches a film 1 with a coating 4 of hard particles 3. In fact, Luckshandel [sic] teaches that “the connecting element is an annular plate of steel film which is 0.1 mm thick.” Col. 4, lines 39-40. It is offered that one of ordinary skill in the art would not categorize a thin film as an intermediate body as called for by claims 1 and 28 of the present application. App. Br. 16; see also Reply Br. 7. Appellant further contends that “Lukschandel provides no reason why one would apply the teachings of Lukschandel, which refers to a thin resilient film which is coated on both 6 Appeal 2015-003127 Application 12/593,198 sides with particles, to Lindenthal, as the resilient film is not suitable to be arranged in a recess.” Reply Br. 9. The Examiner responds: “Luckshandel [sic] is only relied upon to teach providing a coating including hard particles on each contact area of an intermediate element between a connection of components.” Ans. 20. Enlarging on the teachings of Lukschandel, the Examiner states: Luckshandel [sic] is concerned with a generic element for the frictional connection of components, such frictional connections being used in all sectors of mechanical engineering, often to transmit transvers forces of torque (see Col. 1, LI 1-15), the object of the invention being achieved by the placement of a connection element between contact areas of two work pieces to be joined (therefore making the connection element an intermediate element), with the connection element having a coating including hard particles on each contact area (see for example Fig. 1 and Col. 2, L25-32). Ans. 20-21. The Examiner also states, with regard to the combination of Lukschandel with Lindenthal: [T]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art (citing In re Keller, 642 F.2d 413 (CCPA 1981)). Ans. 20. We agree with the Examiner that Lukschandel provides clear teaching of a coating including hard particles on each contact area of an intermediate element between a connection of components. We are not persuaded by Appellant’s arguments that the thin film of Lukschandel cannot be 7 Appeal 2015-003127 Application 12/593,198 considered an intermediate element, and further, the Examiner relied on Lindenthal, not Lukschandel, for teaching an intermediate connecting body. See Final Act. 2. In other words, we are not persuaded by Appellant’s argument that the Lukschandel film cannot be bodily incorporated into the Lindenthal device since the Examiner is relying on Lindenthal’s item 7 as corresponding to the claimed “intermediate connecting body,” not Lukschandel’s thin film. See Final Act. 3—4. Accordingly, Appellant’s arguments regarding the teachings of Lukschandel are not persuasive of Examiner error. The Examiner further acknowledges that the combination of Lindenthal and Lukschandel does not “expressly disclose” the particle size of the hard particles being greater than 30pm. Final Act. 4. The Examiner relies on the teachings of Nichols for disclosing this limitation finding that “Nichols teaches a connection of components having a coating with hard particles composed of corundum in which the particle size is greater than 30pm (Col. 4, Ll-5; Grit No. 24 to Grit No. 54 is equivalent to approximately 305-686pm.” Final Act. 4 (citing READE Conversion Chart). The Examiner explains that it would have been obvious “to modify the combination of Lindenthal and Luckshandel [sic] to include a particle size greater than 30pm in order to effect a strong, positive connection, as taught by Nichols.” Final Act. 4. Appellant does not respond to this finding, or the Examiner’s conclusion, and as such, we are not informed of error by the Examiner that might warrant a reversal based thereon. The Examiner further acknowledges that the combination of Lindenthal, Lukschandel, and Nichols does not “expressly disclose” multiple 8 Appeal 2015-003127 Application 12/593,198 intermediate connecting bodies forming a segmented ring. Final Act. 4. However, the Examiner finds that McKay provides such teaching. Final Act. 4-5. The Examiner finds that McKay teaches an annular disk element (15) secured to an annular flange (6), wherein the disk element “is divided into multiple segments, thus forming a segmented ring.” Final Act. 4. The Examiner finds that this segmented ring “allows for more play of the overall ring, such that an accurate alignment of the annular disk segments (specifically an alignment of the through holes of the connecting flanges and the ring) may be achieved about the connection to the flange (6) (Col. 3, L57-64).” Final Act. 4-5. The Examiner concludes that a person of ordinary skill in the art would glean from McKay that “a segmented ring is easier to assemble onto a flange than a one-piece ring, as the alignment of individual ring segments would be easier than aligning all the through-holes simultaneously in a one-piece ring.” Final Act. 5. The Examiner thus concludes that it would have been obvious to modify the connection of the combination of Lindenthal, Lukschandel, and Nichols “by segmenting the intermediate body into a segmented annular ring, thus defining multiple intermediate connecting bodies, in order to provide more play of the ring segments thus allowing easier alignment of the intermediate connecting bodies with the first and second components, as taught by McKay.” Final Act. 5. In rebuttal, Appellant offers into consideration figures 5 and 7 of the McKay patent. According to Appellant, figure 5 is an exploded view of the McKay assembly and figure 7 is a cross-sectional view of the assembly. See Reply Br. 10. In discussing those figures, Appellant states: 9 Appeal 2015-003127 Application 12/593,198 Assuming arguendo that member 29 of McKay is the required segmented ring, the claimed invention still does not result. Review of the [] figures reveals that member 29 serves as an endplate for the assembly. Notably, threaded studs 14 extend from member 29 for threaded engagement with locking nuts 12. As such, member 29 is used as an endplate unto which other components are attached, not one which is between other elements, as required by claims 1 and 29 [sic] of the present application. Reply Br. 10-11. Addressing the Examiner’s combination of McKay with Lindenthal, Appellant contends: [I]f one were to combine these two teachings, the segmented end plate 29 of McKay would not be disposed between the suggested first and second components of Lindenthal. Rather, the segmented end plate 29 of McKay would be disposed at an end of the first and second components of Lindenthal for subsequent attachment by other elements. Reply Br. 11. Appellant’s argument is not persuasive. Lindenthal is cited by the Examiner for teaching of an annular intermediate connecting body, whereas McKay is relied on for teaching dividing an annular disk element into multiple segments to form a segmented ring. The Examiner’s reason for combining McKay with the combination of Lindenthal, Lukschandel, and Nichols, namely, segmenting the intermediate body into a segmented annular ring thereby defining multiple intermediate connecting bodies for easier assembly, is, as stated by the Examiner, found in McKay at “Col. 3, L57-64.” final Act. 5. Appellant does not explain how this reason to combine fails to provide sufficient articulated reasoning with rational underpinning to support the legal conclusion of obviousness as discussed in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) {citing In re Kahn, 441 E.3d 977, 988 (Led. Cir. 2006)). Accordingly, we do not find 10 Appeal 2015-003127 Application 12/593,198 Appellant’s contentions persuasive of Examiner error. Contrary to Appellant’s contention, the combination proposed by the Examiner would not result in a segmented endplate attached to the exterior of one of the flanges of the Lindenthal device but, rather, would produce a segmented intermediate connecting body provided between the flanges of the Lindenthal device. Lastly, the Examiner finds that “Lindenthal as modified by Luckschandel [sic], Nichols and McKay et al. is silent as to the size of the first (1) and second (2) components; specifically that each has a diameter greater than 0.5m.” Final Act. 5. However, the Examiner concludes a person having ordinary skill in the art “would have found it desirable to increase the size of the first and second components to be greater than 0.5m, as such would be inherent in order to handle the increased torque load when increasing the size of a wind turbine to create a more powerful machine.” Final Act 5. The Examiner further relies on MPEP § 2144.04(IV)(A) and In re Rose, 220 F.2d 459 (CCPA 1955) for the proposition that “changes in size and/or proportion have been established by case law to be obvious where there is no unexpected result (criticality)” associated with the change. Final Act. 5-6; see also Ans. 17-19. In rebuttal, Appellant contends that the Examiner’s conclusion is cursory and “wholly ignores the requirement that ‘[i]f the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection.’ MPEP §2144.04.” App. Br. 15. Appellant points to paragraphs 6 and 7 of the Specification for demonstrating the criticality of the limitation that the first and second components must have a diameter 11 Appeal 2015-003127 Application 12/593,198 greater than 0.5 m. App. Br. 15. Appellant also questions the validity of the Examiner’s reliance on In re Rose in support of the rejection. Specifically, Appellant asserts: [T]he remarks by the Examiner are also contrary to the restriction of “if the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.” MPEP § 2144.04. Review of the final Office action reveals that the Examiner has cited to In re Rose, 220 F.2d 459 in support of the rejections. However, In re Rose involved a lumber package of appreciable size and weight requiring handling by a lift truck. MPEP § 2144.04. It is considered apparent that a lumber package is not in the least bit similar to the connection assembly for components of a wind turbine of the present application. App. Br. 15; see also Reply Br. 6. Assuming, arguendo, the Examiner’s reliance on In re Rose is misplaced, we still do not see where paragraphs 6 and 7 of the Specification ascribe any criticality to the first and second components having a diameter greater than 0.5 m. Paragraph 4 of the Specification states, in part, and with emphasis added: “To connect large volume components of a wind turbine with each other during installation, maintenance or repair, flange connections and/or screw connections are provided between the components.” Paragraph 6 of the Specification states, with emphasis added: “Based on this state of the art, it is the object of the present invention to improve the connection of large volume components of a wind turbine, whereby it should be possible to increase the load-bearing capacity of screw connections or the like, which are subject to high stress.” Paragraph 7 of the Specification states, in part: “The object is solved by a connection of components of a wind turbine, in particular components of a wind turbine with a diameter greater than 0.5m....” 12 Appeal 2015-003127 Application 12/593,198 From the foregoing, it is clear that the object of the subject invention is to improve the connection of large volume components of a wind turbine. While the Specification does not define or provide the size of “large volume” wind turbine components, paragraph 7 indicates the “object is solved” by a connection of components of a wind turbine, in particular components of a wind turbine with a diameter greater than 0.5 m. Read as a whole, paragraphs 4, 6, and 7 imply that large volume wind turbine components represent the state of the art and that Appellant is improving the connection between wind turbine components of already existing diameters. That is, we agree with the Examiner that “the invention is not with respect to the diameter of the components but rather an improvement [emphasis added] in the connection between known components having the recited diameter.” Ans. 18. Furthermore, nowhere in the Specification or prosecution history does Appellant state that wind turbine components greater than 0.5 m were unknown in the art prior to the present invention. For the foregoing reasons, and based on the record presented, we sustain the Examiner’s rejection of claims 1-8, 10-12, 14-18, and 23-28. The rejection of claim 9 as unpatentable over Lindenthal, Lukschandel, Nichols, McKay, and Torpey Appellant does not separately argue the merits of claim 9 versus claim 1 from which it depends. See App. Br. 17. Accordingly, we summarily sustain the Examiner’s rejection of claim 9. DECISION The Examiner’s rejections of claims 1-12, 14-18, and 23-28 are affirmed. No time period for taking any subsequent action in connection with 13 Appeal 2015-003127 Application 12/593,198 this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation