Ex Parte Trede

Patent Trial and Appeal Board

Dec 21, 2016

12593198 (P.T.A.B. Dec. 21, 2016)

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
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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
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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.
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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
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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
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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
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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
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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:
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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
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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
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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....”
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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
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this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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