Nicholas Suetrong et al.

Patent Trials and Appeals Board

Apr 19, 2021

2020004272 (P.T.A.B. Apr. 19, 2021)

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.
13/815,811 03/16/2013 Nicholas Aruhn Aylor Suetrong AYLOR-US6 3156
7590 04/19/2021
Robert B. Aylor
9502 Bluewing Terrace
Cincinnati, OH 45241
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
04/19/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS ARUHN AYLOR SUETRONG and
ROBERT BENSON AYLOR

Appeal 2020-004272
Application 13/815,811
Technology Center 3600
BEFORE LINDA E. HORNER, BRANDON J. WARNER, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a second appeal of this application to the Board. In the first
appeal, the Board affirmed the Examiner’s decision to reject then-pending
claims 1, 10‒18, 21, and 22. Appeal 2018-000605 (PTAB Jan. 17, 2018).
After the Board’s decision, Appellant1 canceled those claims, and presented
new claims. Pursuant to 35 U.S.C. § 134(a), Appellant now appeals from

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real parties in interest as Nicholas Aruhn
Aylor Suetrong and Robert B. Aylor. Appeal Br. 1.
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the Examiner’s decision to reject now-pending claims 42‒57 and 60. We
have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejects claims 42‒57 and 60 as failing to comply with
the written description requirement of 35 U.S.C. § 112(a), as being indefinite
under 35 U.S.C. § 112(b), as failing to further limit the subject matter of a
claim from which another claim depends under 35 U.S.C. § 112(d), as
anticipated by the prior art under 35 U.S.C. § 102(a)(1), and as unpatentable
under 35 U.S.C. § 103 based on obviousness of the claimed subject matter
over the prior art. Appellant argues that the written description provides
adequate support for the subject matter of the claims. Appeal Br. 8‒9.
Appellant also argues that the claim language is clear and that the dependent
claims further limit the claims from which they depend. Id. at 9‒12.
Appellant also argues that the prior art does not anticipate or render obvious
the subject matter of the appealed claims. Id. at 12‒16.
For the reasons discussed below, we sustain the rejections under
§§ 112(a) and 112(d), we sustain the rejection under § 112(b) as to only
some of the appealed claims, and we do not sustain the rejections under
§§ 102(a)(1) and 103. Thus, we AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to a sail structure for “converting air
movement into rotary mechanical action.” Spec. 1. Claim 42, reproduced
below, is illustrative of the claimed subject matter:
42. A novel sail structure characterized in that it comprises
either:
1. a cup-like sail formed from a flexible substrate, said
cup-like sai1 having an open edge, and said open edge being
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attached to at least two supporting solid members, each of said
solid members being either a radial spoke attaching said cup-like
sail to a rotatable axis or a spar attached to said radial spoke, there
being at least three separate points of attachment of said open
edge to said supporting solid members, said points of attachment
defining a plane for the open edge of the said cup-like sail, said
cup-like sail also being attached to another separate spar which
is attached to at least one of the said supporting solid members at
one end and which is also attached at the other end to an
attachment point in the center of the said cup-like sail to maintain
the depth of said cup-like sail;
2. a sail formed from a flexible substrate having an open
cuff along an edge of the sail on the windward side of said sail
to minimize spillage of wind out of the sail2; or
3. both 1. and 2.
Appeal Br. 17 (emphasis added).

2 The Examiner found that independent claim 42 and dependent claims 58
and 59 are directed to an alternate invention of “a sail formed from a flexible
substrate having an open cuff” that is “independent from a cup-like sail
structure as claimed and not an obvious variant.” Final Act. 2. The
Examiner determined that Appellant constructively elected the originally
presented invention, directed to a cup-like sail attachment. Id. Thus, the
Examiner withdrew from consideration the alternate embodiment recited in
the italicized language of subparagraph 2 of claim 42 and claims 58 and 59,
as being directed to a non-elected invention. Id. at 1‒2; see also Ans. 3.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sala US 692,714 Feb. 4, 1902
Whitehurst US 2,524,500 Oct. 3, 1950
Tornquist US 4,364,709 Dec. 21, 1982
Carrol US 4,832,571 May 23, 1989
Dahlberg US 6,895,812 B2 May 24, 2005
REJECTIONS
The Examiner rejects the claims on appeal on the following grounds:
1. Claims 42‒55 and 60 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement.
2. Claims 42‒57 and 60 stand rejected under 35 U.S.C. § 112(b)
as being indefinite.
3. Claim 49 stands rejected under 35 U.S.C. § 112(d) as being in
improper dependent form.
4. Claims 42, 56, and 60 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Whitehurst.
5. Claims 43 and 54 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Whitehurst and Carrol.
6. Claims 42‒44, 54‒56, and 60 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Carrol and Whitehurst.
7. Claims 45‒48 and 57 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Tornquist and Whitehurst.
8. Claim 50 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Dahlberg and Whitehurst.
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9. Claim 51 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Tornquist, Whitehurst, and Sala.
OPINION
Rejection of claims 42‒55 and 60 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement
The Examiner rejects independent claim 42 and its dependent claims
43‒55 and 60 as failing to comply with the written description requirement
because the “limitation describing at least two supporting members for each
cup-like sail as each being ‘a radial spoke’ is not supported by the
Specification.” Final Act. 3.
Appellant argues that the disclosure contains adequate basis for more
than one radial spoke attached to each cup-like sail. Appeal Br. 8.
Specifically, Appellant points to the incorporation by reference of three
patents in the Specification for their disclosure of “[t]he use and advantages
of vertical rotating structures to generate electricity.” Id. at 9 (quoting
Spec. 11 (incorporating by reference US 8,087,894 to Brookes, US
7,984,110 to Morgan et al.,3 and US 7,083,382 to Ursus “to supplement the
disclosure of how to attach such structures to electricity generators, support
structures, etc.”)). Appellant also argues that the recitation in original
claim 1 of “a cup-like sail structure attached to at least one radial spoke
mounted on a vertical rotatable axis” provides adequate support for the claim
language. Id. at 9 (emphasis added in Appeal Brief).

3 The Specification refers to U.S. Patent No. “7,984,110” to Morgan et al.
The U.S. patent bearing this patent number is to Raman et al. and does not
pertain to using vertical rotating structures to generate electricity.
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We do not find adequate support in the Specification for the claim
limitation of more than one radial spoke attached to each cup-like sail. The
embodiments shown in the Figures and described in the Specification
disclose only one radial spoke attached to each cup-like sail. See Spec. 5‒6
(describing Figures 2 and 3, which show each cup-like sail 16 attached to a
single radial spoke 17 at point B and attached to two lateral spars 21, 22 at
points C and D). The Specification does not provide description of an
embodiment having more than one radial spoke attached to a cup-like sail.
Also, we agree with the Examiner that the incorporation by reference
of the Brookes, Morgan, and Ursus patents “lacks specificity” as to which
specific teachings are being looked to from these patents. Ans. 5. The
Specification incorporates by reference these patents for their disclosures of
how to attach vertical rotating structures to electricity generators and support
structures for use of the vertical rotating structures to generate electricity.
Spec. 11. This discussion in the Specification appears under the heading
specifically pertaining to the “Electricity generation” embodiment, which
further describes how the vertical rotating axis is attached to an electricity
generator. Id. at 11‒12. We cannot discern any disclosure from the cited
Morgan patent because it is not identified by the proper patent number in the
Specification. As to the Brookes and Ursus patents, we agree with the
Examiner that the Specification does not make clear that the disclosure
incorporated from these patents is directed to the attachment of the radial
spoke(s) to a sail. Ans. 4‒5. See Advanced Display Sys. v. Kent State Univ.,
212 F.3d 1272, 1282 (Fed. Cir. 2000) (“To incorporate material by
reference, the host document must identify with detailed particularity what
specific material it incorporates and clearly indicate where that material is
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found in the various documents.”) (citing In re Seversky, 474 F.2d 671, 674
(CCPA 1973)). Thus, Appellant’s incorporation by reference in the
Specification is not sufficient to show that Appellant had possession of the
claimed subject matter at the time of filing of the application.
We also find inadequate support in original claim 1, which recited in
relevant part, “a cup-like sail structure attached to at least one radial spoke
mounted on a vertical rotatable axis,” for the claim limitation in claim 42 of
more than one radial spoke attached to each cup-like sail. Spec. 14.
Specifically, claim 42 on appeal recites that each of at least two supporting
solid members can be a radial spoke attaching the cup-like sail to a rotatable
axis, there being at least three separate points of attachment of the open end
of the cup-like sail to the supporting solid members. We agree with the
Examiner that the recitation in original claim 1 of a cup-like sail structure
attached to at least one radial spoke mounted on a vertical rotatable axis does
not provide adequate written description support for the three points of
attachment between the radial spokes and the open end of the cup-like sail,
as recited in claim 42. Ans. 5.
Appellant expresses confusion as to why claim 42, limited to more
than one radial spoke attached to the cup-like sail, lacks adequate written
description support, while claim 56, which is open to any number of such
attachment points, does not. Reply Br. 3‒4. We disagree with Appellant’s
premise that claim 56 is open ended. Claim 56 recites “[a] cup-like sail
structure attached to a radial spoke that is mounted on a vertical rotatable
axis” and recites that “one or more spars” are attached to “said radial spoke”
to help support the sail and “a separate spar going out from said radial
spoke.” The claim language expressly distinguishes between singular and
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plural by reciting “a radial spoke” as contrasted with “one or more spars”
and referring back to “said radial spoke” for the singular “a radial spoke,” as
contrasted with “at least one of said spars” for the plural “one or more
spars.” Thus, claim 56 recites a sail supported by a single radial spoke and
one or more spars.
For these reasons, the Specification does not provide adequate written
description support for the “radial spoke” limitation in claim 42, and by
virtue of their dependency, claims 43‒55 and 60. Thus, we sustain the
Examiner’s rejection of claims 42‒55 and 60 under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement.
Rejection of claims 42‒57 and 60 under 35 U.S.C. § 112(b) as being
indefinite
The Examiner rejects claims 42‒57 and 60 as being indefinite for
several reasons. We address these reasons on a claim-by-claim basis below.
Independent claim 42
The Examiner determines claim 42 is indefinite because it is written
in the alternative to encompass a non-elected invention. Final Act. 4. We
agree with the Examiner’s determination, which is not rebutted by
Appellant, that claim 42 is indefinite because it encompasses a non-elected
invention. Appellant argues only that the claim can be corrected through
further amendment to overcome this aspect of the rejection. Appeal Br. 10.
Thus, Appellant does not contest this basis for the rejection as the claim is
currently presented on appeal, and we summarily sustain it. See In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (holding that the Board did not
err in sustaining an indefiniteness rejection when the appellant failed to
contest it on appeal).
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The Examiner also determines that the “claimed attachments between
the sail and support members and relative positioning thereof” recited in
claim 42 are unclear. Final Act. 4. Appellant argues that “the disclosure of
the support structure for the cup-like sail is sufficient” and that “[t]he spar
that is attached to the bottom of the sail can be attached at its other end to
any of the support structure including ‘one or more’ of the radial spokes or
to a spar attached to a radial spoke.” Appeal Br. 10. We find that although
the claim language describing “another separate spar” allows for various
attachment configurations between “another separate spar” and “at least one
of the supporting solid members,” the claim language is not so unclear as to
render the claim limitation indefinite. As to the Examiner’s concern about
“a spar” and “another separate spar,” the recitation of the claim language
“which is attached” modifies the “another separate spar” so that this separate
spar is distinguished from the earlier “spar” recited in the claim. Thus, we
do not find that the claim limitation of “another separate spar” is unclear.
Because we agree with the Examiner’s first stated reason as to why
claim 42 is indefinite, we sustain the rejection of claim 42 under 35 U.S.C.
§ 112(b). Claims 43‒55 and 60 are likewise indefinite by virtue of their
dependency from claim 42. Thus, we also sustain the rejection of claims
43‒55 and 60. To the extent the Examiner provided further reasons why
these dependent claims are indefinite, we address them below.
Dependent claim 47
The Examiner determines that “the intended scope of ‘attached to
what is normally the stator. . .’ (line 5) is not clear.” Final Act. 4; Ans. 7.
Appellant argues that the limitation of claim 47 requires “a way to allow for
rotation in both directions,” explaining:
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What constitutes the rotor and stator portions of a conventional
electrical generator are well known. Normally, the stator portion
remains in place and is stable, hence the use of the term “stator.”
However, the claim is directed to an option in which each portion
(both the rotor and the stator) can be rotated in different
directions.
Appeal Br. 10. We agree with the Examiner that the meaning of “what is
normally the stator” as recited in claim 47 is not clear. Appellant
acknowledges that normally a stator “remains in place,” but that the claim
calls for attachment of one of the claimed structures to a stator that can
rotate. Thus, the claim refers to a stator different from a “normal” stator.
This renders the claim language unclear. For this reason, we agree with the
Examiner that claim 47 is indefinite.
Dependent claim 49
The Examiner determines that claim 49 is not further limiting of the
device of claim 48, from which claim 49 depends, because the balloon
addressed in claim 49 is not a positively recited element of the device. Final
Act. 4. The Examiner finds that claim 49 “merely recites a limitation of the
intended use of keeping the balloon inflated.” Ans. 7. Because we find that
claim 49 is indefinite by virtue of its dependency from claim 42, we do not
reach this further reasoning provided by the Examiner as to another basis for
indefiniteness. Instead, we address this further reasoning below in our
analysis of the rejection of claim 49 under 35 U.S.C. § 112(d).
Independent claim 56
The Examiner determines that the limitation “cup-like sail structure
having one or more spars that are attached at or near the end of the said
radial spoke to help support said sail” is indefinite because “it is not clear
what element(s) the attachment of one or more spars . . . is referring to.”
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Final Act. 4. The Examiner also determines that the limitation “and also
having a separate spar going out from said radial spoke to where it is
attached at the center” is indefinite because it is unclear “what subject matter
is being modified.” Id. Appellant argues “[t]he first spars that are
mentioned are attached to the radial spoke as part of the support structure for
the cup-like sail and the attachment points define the opening of the sail”
and “[t]he ‘separate’ spar that is mentioned is clearly and specifically for the
purpose of maintaining the depth of the sail.” Appeal Br. 11.
We do not find that the language of claim 56 renders the claim
indefinite. Although the Examiner identifies in the rejection the limitations
that are found to be indefinite, the Examiner does not persuasively explain
why the Examiner believes these limitations are unclear. We do not find the
limitations that describe the “at least three separate attachment points” of the
spars and the radial spoke to the edge of the cup-like sail structure as being
so unclear as to render the claim indefinite. A person skilled in the art,
reading the Specification and looking at the description of Figures 2 and 3,
would be able to understand the metes and bounds of this claim language.
For instance, the Specification describes, with reference to Figures 2 and 3,
an embodiment in which the edges of cup-like sail 16 are attached to radial
spoke 17 at attachment point B and are attached to lateral spars 21, 22 at
attachment points C and D, respectively. Spec. 5.
Likewise, we do not find the limitation describing the “separate spar”
and its attachment to the center of the cup-like sail to maintain the depth of
the cup-like sail to be so unclear as to render the claim indefinite. A person
skilled in the art, reading the Specification and looking at the description of
Figures 2 and 3, would be able to understand the metes and bounds of this
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claim language. For instance, the Specification describes, with reference to
Figures 2 and 3, an embodiment in which central spar 19 is attached to the
bottom of cup-like sail 16 at attachment point A and defines the depth of
cup-like sail 16. Spec. 5‒6.
For these reasons, we do not sustain the rejection of claim 56, and its
dependent claim 57, under 35 U.S.C. § 112(b).
Dependent claim 60
The Examiner determines that claim 60 is indefinite because it
reiterates limitations from independent claim 42 instead of referring to the
subject matter of claim 42 and clearly modifying that subject matter or
presenting additional limitations thereto. Final Act. 4‒5. Appellant
responds only that if claim 42 is further amended, then claim 60 will be
redundant of claim 42 and, therefore, deleted. As explained above in our
analysis of claim 42, this response does not overcome the current rejection.
Conclusion
For the reasons discussed above, we sustain the rejection of claims
42‒55 and 60, and do not sustain the rejection of 56 and 57, under 35 U.S.C.
§ 112(b).
Rejection of claim 49 under 35 U.S.C. § 112(d) as being in improper
dependent form
The Examiner rejects dependent claim 49 for failing to further limit
the subject matter of the device recited in the preceding claims upon which
claim 49 depends.4 Final Act. 5; Ans. 7. We agree with the Examiner that

4 Claim 49 depends from claim 48, which depends from claim 47, which
depends from claim 46, which depends from claim 45, which depends from
claim 42. Appeal Br. 17‒18. Independent claim 42 is directed to a “sail
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claim 48, from which claim 49 directly depends, does not positively recite a
balloon. Rather, claim 48 recites the manner in which the claimed electricity
generation structure is suspended. Thus, claim 49, which further recites how
the unclaimed balloon is kept inflated, does not further limit the electricity
generation structure being claimed. Thus, we sustain the rejection of claim
49 under 35 U.S.C. § 112(d).
Rejection of claims 42, 56, and 60 under 35 U.S.C. § 102(a)(1) as
anticipated by Whitehurst
The Examiner finds that Whitehurst discloses the claimed cup-like
sail formed from a flexible substrate 16 having an open edge attached to at
least two supporting solid members 14, “each of said solid members being
either a radial spoke attaching said cup-like sail to a rotatable axis or a spar
attached to said radial spoke.” Final Act. 6 (citing Whitehurst, Figures 1‒3,
2:25 et seq.). The Examiner also finds, with reference to the rejection of
claim 56, that Whitehurst discloses a radial spoke 10. Id.
Appellant argues that Whitehurst’s airfoil “is designed to rotate
around the pin 18 at the center of the airfoil” and that pin 18 is not attached
to a radial spoke that is attached to a vertical rotatable axis. Appeal Br. 12‒
13 (emphasis omitted).
The Examiner responds that Whitehurst’s airfoil “rotate[s] around an
axis (vertical and/or repositionable).” Ans. 8.

structure.” Id. at 17. Dependent claim 45 is directed to a “structure for
converting wind energy into mechanical energy containing at least two of
the cup-like sail structures of Claim 42.” Id. Claim 48 further recites,
“wherein said electricity generation structure is suspended under a balloon.”
Id. at 18. Claim 49 further recites, “wherein said balloon is kept inflated via
a small tube from a source of gas for inflating the balloon.” Id.
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Independent claim 42 recites “at least two supporting solid members,
each of said solid members being either a radial spoke attaching said
cup-like sail to a rotatable axis or a spar attached to said radial spoke.”
Appeal Br. 17. Independent claim 56 similarly recites “[a] cup-like sail
structure attached to a radial spoke that is mounted on a vertical rotatable
axis.” Id. at 19. Thus, both independent claims identify a “radial spoke”
that lies between and attaches the cup-like sail to a rotatable axis.
We agree with Appellant that Whitehurst does not disclose such a
“radial spoke.” Whitehurst discloses a kite comprised of stabilizer 10
supporting tail assembly 11 on one end and rotary airfoil 12 on the other.
Whitehurst, Figs. 1‒3, 2:18‒22. Rotary airfoil 12 is comprised of ribs 14,
hub plate 13, peripheral binding 15, and covering material 16. Id. at 2:25‒
28. Hub plate 13 receives pin 18 through central aperture 17. Id. at 2:29‒
31. Pin 18 serves as the axis about which airfoil 12 rotates. Id. at 2:31‒32.
Pin 18 is secured to the forward end of stabilizer 10. Id. at 3:32‒35.
Stabilizer 10, which the Examiner identified as corresponding to the
claimed radial spoke, does not lie between and connect Whitehurst’s
airfoil 12, which the Examiner identified as corresponding to the claimed
cup-like sail structure, to a rotatable axis, as claimed. Rather, Whitehurst’s
airfoil 12 rotates about the axis of pin 18, which is secured to stabilizer 10.
Thus, we disagree with the Examiner’s finding that Whitehurst’s disclosure
anticipates the structure of claims 42 and 54, and dependent claim 60.
For these reasons, we do not sustain the rejection of independent
claims 42 and 56 and dependent claim 60 under 35 U.S.C. § 102(a)(1) as
anticipated by Whitehurst.
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Rejection of claims 43 and 54 under 35 U.S.C. § 103 as being unpatentable
over Whitehurst and Carrol
In the rejection of claims 43 and 54, the Examiner finds that
Whitehurst’s flexible cover 16 does not necessarily provide for billowing.
Final Act. 7. The Examiner turns to Carrol to teach “a parachute style
cup-like sail provided with excess material 20 which is considered to
partially billow.” Id. (citing Carrol, 4:47 et seq., Figs. 5, 6). The Examiner
determines it would have been obvious to modify Whitehurst’s cover to
allow for billowing, as taught by Carrol, to “provide increased drag and
stability.” Id.
The Examiner’s rejection suffers from the same deficiencies in the
underlying findings as to Whitehurst, as it relates to independent claim 42,
from which claims 43 and 54 depend. For the reasons discussed above as to
the rejection of claim 42 based on Whitehurst, we likewise do not sustain the
rejections of dependent claims 43 and 54 under 35 U.S.C. § 103 as
unpatentable over Whitehurst and Carrol.
Rejection of claims 42‒44, 54‒56, and 60 under 35 U.S.C. § 103 as being
unpatentable over Carrol and Whitehurst
In this ground of rejection, the Examiner finds that Carrol discloses a
parachute style cup-like sail forming an open planar edge attached to rim 15
on at least three points by lines 22 and at the center to additional spar 17 to
maintain a depth. Final Act. 7; Carrol, Figs. 5, 6. The Examiner finds that
Carrol’s lines 16 form a radial spoke configuration and Carrol’s overlays 21
act as prows, but that these lines 16 and overlays 21 are not necessarily rigid
support members attached to the open edge. Id. The Examiner turns to
Whitehurst for its teaching of solid spar/spokes 14 for structural support of
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sail 16. Id. The Examiner determines it would have been obvious “to
include solid members configured as Whitehurst in the invention to Carrol
for providing added structural components and increased durability.” Id.
Appellant argues that Carrol “teaches a conventional airfoil type of
windmill that rotates around its support” and having “[a] flexible support
shaft supported by guy wires [that] is provided at its upper end with a
flexible rotor and an airfoil assembly.” Appeal Br. 13. Appellant further
argues that “[t]he primary support member in Carrol is supposed to be able
to bend and is not rigid” so that the flexible primary support “keeps the
rotating vanes in a vertical position and there is no radial spoke or rotatable
axis for the ‘sail’ to rotate around.” Reply Br. 11. We understand this
argument to question the adequacy of the Examiner’s reason to modify
Carrol’s flexible wind turbine design with Whitehurst’s ribs 14.
Carrol relates to “a flexible tethered wind turbine useful . . . for
generating electricity.” Carrol, 1:4‒6. Carrol describes that “[i]n some wind
turbines the rotor can be driven by a . . . jib-type sail mounted on a mast that
terminates in a hub and is braced by guy wires and a forward facing spar.”
Id. at 1:38‒52. Carrol describes that its invention overcomes disadvantages
of known devices by providing a turbine comprised of a lightweight flexible
shaft supported by guy wires, a flexible rotor with a rim, made preferably of
rope or cord, and a flexible airfoil or sail assembly.” Id. at 2:16‒21. Carrol
discloses that “[t]he airfoil section according to the invention has no rigid
leading edge” and that “the entire flexible airfoil is shaped by soft material
held in place in a beam-like fashion, and is soft and collapsible” and
includes “[f]lexible radial spokes.” Id. at 2:33‒39. Carrol teaches that
“[d]ue to the complete flexibility of the entire rotor, it can be easily distorted
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by gusts or gyroscopic forces caused by changes in wind direction – without
suffering from any abnormal stresses in the rotor structure” and that “[t]he
flexible rotor can also automatically changes its angle and direction in
response to shifts in the wind.” Id. at 2:47‒51, 59‒60. Carrol’s rotor and
sail assembly shown in Figures 5 and 6 collapses with no wind, as shown in
Figure 6.
Carrol touts the importance of flexibility in its rotor design and the
ability of the rotor to collapse. The use of flexible radial spokes appears to
be an important distinction of Carrol’s turbine design as compared to known
devices. In light of this teaching in Carrol, the Examiner has not provided
an adequate explanation as to why a person having ordinary skill in the art
would have been led to modify the wind turbine of Carrol in the manner
claimed to include at least two supporting solid members that are either a
radial spoke attaching the cup-like sail to a rotatable axis or a spar attached
to the radial spoke. See KSR Int’l Co. v Teleflex, Inc., 550 U.S. 398, 418
(2007) (holding that an explicit analysis of a reason to combine the known
elements in the fashion claimed is required); 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.”) (cited with approval in KSR, 550 U.S. at 418). In other
words, the Examiner’s reason for the proposed modification – “providing
added structural components and increased durability” – is not based on
rational underpinning given Carrol’s focus on the need for the airfoil to be
flexible and collapsible.
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For this reason, we do not sustain the Examiner’s rejection of claims
42‒44, 54‒56, and 60 under 35 U.S.C. § 103.
Rejection of claims 45‒48 and 57 under 35 U.S.C. § 103 as being
unpatentable over Tornquist and Whitehurst
In this ground of rejection, the Examiner finds that Tornquist
discloses a wind power converter comprising cup-like sail structures 22
made of flexible material mounted as claimed to central spars 16 at the end
of radial spokes 18 and additional spars 28 attached perpendicularly to the
radial spoke at 26. Final Act. 8. The Examiner finds that “[t]he opening of
Tornquist is not configured as claimed.” Id. The Examiner turns to
Whitehurst for its teaching of using solid spars 14 for structural support of
sail 16. Id. The Examiner determines it would have been obvious “to
include cup-like members configured as Whitehurst in the invention of
Tornquist for providing an alternative structural configuration.” Id.; Ans. 10
(explaining that a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way).
Appellant argues that if one were to apply the Whitehurst structure to
Tornquist’s wind turbine, the modification “would totally destroy the
essential structure of Tornquist” because “[t]he Whitehurst structure would
rotate in place and not allow the wind to proceed to the new structure in the
Tornquist invention.” Appeal Br. 15. Appellant further argues that “[i]t is
not obvious to use the structure of a kite to replace any structure in
Tornquist” and that “there is no indication that any substitution would
improve Tornquist in any way and there is no suggestion in the rejection of
what improvement would be provided.” Reply Br. 11‒12.
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Tornquist discloses a windmill that is “multidirectional” and produces
“relatively high torque at low speeds of rotation.” Tornquist, 1:8‒10.
Tornquist’s windmill 10 includes a vertical axle 12 from which a rotor
assembly 14 is journaled for rotation with axle 12 about a vertical axis. Id.
at 2:26‒29. Rotor assembly 14 includes general circular rigid member 16,
which has a plurality of rigid spokes 18 extending between central hub 20
and rigid member 16. Id. at 2:30‒34. Mounted on rigid member 16 is a
plurality of flexible vanes 22. Id. at 2:38‒39. Each vane 22 comprises a
conical shape and is made of a material such as dacron and maintained in its
conical shape by stay rods 28, one end of which are inserted into pockets 30
formed in the cone. Id. at 2:44‒55. Each cone is open at opposite ends 24,
26. Id. at 2:47‒48. The other end of stay rods 28 are received by tubular
holders 34 secured about support 16. Id. at 2:64‒68.
Tornquist describes that “[i]t is preferred that adjacent cones be offset
from the horizontal plane of rotation by about fifteen degrees [to] insure that
the cones will capture the maximum amount of wind and prevent slip stream
drag.” Id. at 3:14‒22. Tornquist teaches that as the vanes capture the wind
in a downflow direction (i.e., from the larger to the smaller cone opening),
the wind will cause the cones to assume the conical inflated configuration,
and those cones oriented to receive the wind in an upflow direction
(i.e., from the smaller to the larger cone opening) will assume a partially
collapsed shape, so that upwind cones will have a drag resistance of about
15% of that which a fully open cone would have travelling in the same
direction. Tornquist, 3:55‒68 and Fig. 5.
As discussed above, Whitehurst relates to “kites which utilize a rotary
airfoil as the main lifting element.” Whitehurst, 1:2‒3. Importantly,
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Whitehurst does not describe an airfoil structure that that will inflate or
collapse depending on the wind direction, as taught in Tornquist. Thus, the
Examiner’s reason to modify Tornquist with Whitehurst’s airfoil structure as
“an alternative structural configuration” is not an adequate reason to explain
why one having ordinary skill in the art would look to a rotary airfoil used as
a lifting element in a kite to replace Tornquist’s flexible vanes. See KSR,
550 U.S. at 418; In re Kahn, 441 F.3d at 988.
For this reason, we do not sustain the rejection of claims 45‒48 and 57
under 35 U.S.C. § 103.
Rejection of claim 50 under 35 U.S.C. § 103 as being unpatentable over
Dahlberg and Whitehurst
The Examiner finds that Dahlberg discloses a cup anemometer
comprising two pairs of cups (four cups) spaced apart about a vertical axis.
Final Act. 8 (citing Dahlberg, 2:35 et seq.). The Examiner finds that “[t]he
cup structure is not considered configured as claimed.” Id. The Examiner
turns to Whitehurst for its teaching of using solid spars 14 for structural
support of sail 16. Id. The Examiner determines it would have been
obvious “to include cup[-]like members configured as Whitehurst in the
invention to Dahlberg for providing an alternative structural configuration.”
Id.; Ans. 12.
Appellant argues that “Dahlberg teaches a solid cup” that is not made
of flexible material and that “Whitehurst would not teach anything about
changing the structural support for a solid cup.” Appeal Br. 16.
Dahlberg discloses a cup anemometer that is designed to have a flat
angular response and that is capable of measuring the size of the total vector
independently of at what angle, horizontally as well as vertically, it blows
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against the anemometer. Dahlberg, 1:44‒52. Dahlberg explains that “[t]he
invention is based on the fact that the opening of the cup in combination
with its arched part is given a cross-section that varies with the angle of
incidence.” Id. at 2:44‒46. The flat angular response is achieved because
the varying cross-sections of the cup deflect the air current in different ways
depending on the blowing angle to result in varying moments around the
rotary shaft. Id. at 2:46‒53. Specifically, Dahlberg’s cups are each
“truncated at its opening by means of three cuts 14, 15, 16 which are
essentially located in three planes that are parallel to the tangent of the
rotational paths of the cups at the opening and that, projected on a fourth
plane 9 that touches the three corners of the cup, essentially form a triangle.”
Id. at 3:14‒20; Figs. 3a, 3b.
As discussed above, Whitehurst relates to “kites which utilize a rotary
airfoil as the main lifting element.” Whitehurst, 1:2‒3. The Examiner has
not provide adequate reasoning as to why one having ordinary skill in the art
would look to a rotary airfoil used as a lifting element in a kite to teach an
improvement in the structure of a cup for an anemometer. The Examiner
also has not explained, in light of Dahlberg’s focus on the specific
configuration of the cup opening to achieve a flat angular response to the
wind regardless of the angle of the wind direction, why one having ordinary
skill in the art would look to Whitehurst’s rotary airfoil for modifications to
Dahlberg’s cup structure. See KSR, 550 U.S. at 418; In re Kahn, 441 F.3d at
988.
For these reasons, we do not sustain the rejection of claim 50 under
35 U.S.C. § 103.
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Rejection of claim 51 under 35 U.S.C. § 103 as being unpatentable over
Tornquist, Whitehurst, and Sala
The Examiner’s rejection of claim 51 suffers from the same
deficiencies in the underlying reasons to combine Tornquist and Whitehurst,
as it relates to claim 45, from which claim 51 depends. For the reasons
discussed above as to the obviousness rejection of claim 45, we likewise do
not sustain the rejection of claim 51 under 35 U.S.C. § 103 as unpatentable
over Tornquist, Whitehurst, and Sala.
CONCLUSION
The Examiner’s rejections under 35 U.S.C. §§ 112(a) and 112(d) are
affirmed. The Examiner’s rejections under 35 U.S.C. § 112(b) are affirmed
as to claims 42‒55 and 60 and reversed as to claims 56 and 57. The
Examiner’s rejections under 35 U.S.C. §§ 102(a)(1) and 103 are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
42‒55, 60 112(a) Written description 42‒55, 60
42‒57, 60 112(b) Indefiniteness 42‒55, 60 56, 57
49 112(d) Improper
dependent form
49
42, 56, 60 102(a)(1) Whitehurst 42, 56, 60
43, 54 103 Whitehurst, Carrol 43, 54
42‒44, 54‒
56, 60
103 Carrol, Whitehurst 42‒44, 54‒
56, 60
45‒48, 57 103 Tornquist,
Whitehurst
45‒48, 57
50 103 Dahlberg,
Whitehurst
50

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51 103 Tornquist,
Whitehurst, Sala
51
Overall
Outcome
42‒55, 60 56, 57

TIME PERIOD FOR RESPONSE
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).
AFFIRMED IN PART