POLYTECH A/S

Patent Trials and Appeals Board

Aug 4, 2021

2021001227 (P.T.A.B. Aug. 4, 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.
15/525,244 05/08/2017 Mads KIRKEGAARD 7100-0101PUS1 3249
2292 7590 08/04/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
LATHERS, KEVIN ANTHONY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
08/04/2021 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MADS KIRKEGAARD and RICHARD BAKER

Appeal 2021-001227
Application 15/525,244
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 46–53, 57–80, and 84.2, 3 See Final

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“POLYTECH A/S.” Appeal Br. 1.
2 The Examiner mistakenly identifies the pending claims as being claims 46–
53 and 55–84 (not 57–84). See Final Act. 1. This is because claims 54–56
have been canceled. See Amendment dated November 7, 2019.
3 We note that the Examiner has not issued a rejection regarding dependent
claims 81–83. Nor has the Examiner indicated that these claims would be
allowable, if properly amended. Claim 81 has no “twin” in the above
rejected claims, however claim 82 is the twin of claim 61 and further, claim
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Act. 1 (Office Action Summary). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a preformed protective cover
for a wind turbine blade.” Spec. 1:5–6. Apparatus claim 46 and method
claim 66 are independent. Claim 46 is illustrative of the claims on appeal
and is reproduced below.
46. A preformed protective cover for a wind turbine blade,
wherein the preformed protective cover is made of a
polyurethane material prepared from a polyol, butanediol, and
an isocyanate, wherein the preformed protective cover is
adapted to be attached along at least a part of a longitudinal
edge of the wind turbine blade by adhesion of an inside of the
preformed protective cover to a surface of the longitudinal edge
of the wind turbine blade, wherein the preformed protective
cover is elongated in a longitudinal direction and has an U-
formed cross-section, wherein the preformed protective cover
includes a central cover section extending in the longitudinal
direction and two peripheral cover sections extending in the
longitudinal direction at either side of the central cover section,
respectively, wherein the central cover section has a minimum
thickness of at least 1 millimetre, and each peripheral cover
section has a thickness decreasing from a maximum thickness
of at least 1 millimetre to a minimum thickness of less than 1/2
millimetre.

83 is the twin of claim 59. As no rejection of claims 81–83 is on appeal
before us (Appellant is equally silent in the matter), we take no position in
the matter.
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EVIDENCE
Name Reference Date
Bonk et al. (“Bonk”) US 4,202,957 May 13, 1980
Hibbard US 2007/0036659 A1 Feb. 15, 2007
Wirt et al. (“Wirt”) US 2010/0135817 A1 June 3, 2010
Koonce et al. (“Koonce”) US 2010/0266799 A1 Oct. 21, 2010
Driver et al. (“Driver”) US 2013/0045105 A1 Feb. 21, 2013
REJECTIONS4
Claims 46–53, 57, 58, 60, 61, 63, and 64 are rejected under 35 U.S.C.
§ 103 as unpatentable over Driver and Bonk.
Claims 59 and 62 are rejected under 35 U.S.C. § 103 as unpatentable
over Driver, Bonk, and Koonce.
Claims 65–67, 69–80, and 84 are rejected under 35 U.S.C. § 103 as
unpatentable over Driver, Bonk, and Hibbard.
Claim 68 is rejected under 35 U.S.C. § 103 as unpatentable over
Driver, Bonk, Hibbard, and Wirt.
Claim 79 is rejected under 35 U.S.C. § 103 as unpatentable over
Driver, Bonk, Hibbard, and Koonce.

4 The rejection of claim 68 under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement has been withdrawn. See Ans. 18.
Additionally, the rejection of claims 46 and 68 under 35 U.S.C. § 112(b) as
being indefinite has also been withdrawn. See Ans. 19.
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ANALYSIS
The rejection of claims 46–53, 57, 58, 60, 61, 63, and 64
as unpatentable over Driver and Bonk
Appellant argues all these claims together. See Appeal Br. 6–8. We
select independent claim 46 for review, with the remaining claims standing
or falling with claim 46. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner primarily relies on Driver for teaching the limitations
of claim 46, including the use of a polyurethane preform adhered to a wind
turbine blade. See Final Act. 7. However, the Examiner acknowledges that
“Driver does not teach a polyurethane material prepared from a polyol,
butanediol, and an isocyanate” as recited. Final Act. 7. The Examiner relies
on Bonk for such teaching and provides reasons for modifying “Driver’s
polyurethane protective layer in view of Bonk’s polyurethane.” Final Act. 8;
see also Ans. 21.
Appellant acknowledges that Driver “is directed to a wind turbine
blade” but states that Bonk “is directed to thermoplastic polyurethane
elastomers.” Appeal Br. 6. As such, Appellant contends that Driver and
Bonk are non-analogous art because “thermoplastic polyurethane elastomers
. . . are not [in] the same field of endeavor as wind turbines.” Appeal Br. 6.
Accordingly, as per Appellant, “one skilled in the art would have no
rationale to look to Bonk to find a material for production of a protective
cover.” Appeal Br. 7.
As is well-known, the analogous art test can involve two different
avenues of investigation. A reference is analogous art if it “is either in the
field of the applicant’s endeavor or is reasonably pertinent to the [particular]
problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977,
987 (Fed. Cir. 2006). Presuming Appellant’s assertion above that Bonk is
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not in “the same field of endeavor as wind turbines” is correct, we must then
assess whether Bonk “is reasonably pertinent to the [particular] problem
with which the inventor was concerned.” Kahn, 441 F.3d at 987.
A review of Appellant’s Specification discloses a desire, by
Appellant, “to improve the robustness of wind turbine blades . . . in order to
avoid damage” while also keeping costs down. Spec. 2:16–19. More
specifically, Appellant’s Specification teaches a desire to improve “the
robustness of the leading edge to erosion” as well avoiding/minimizing
damage due to lightning strikes or de-icing operations. Spec. 2:21–26.
On the topic of robustness, Bonk teaches a polyurethane elastomer
whose hardness “lies within the range of about 60 Shore A to about 80 Shore
D.” Bonk 4:63–65. Table 1 of Bonk discloses upper Shore hardness values
of “44D” and “92A.” It is not made clear how the disclosure of such
hardness values fail to relate to Appellant’s “robustness” concerns, such as
by providing a hardened surface to reduce erosion or the effects of de-icing.
On the topic of lightning strikes, Bonk teaches that “the elastomers of the
invention can have incorporated in them . . . additives such as . . . fire
retardants.” Bonk 6:32–37. Appellant does not make clear how reducing
the possibility of fire would not be beneficial during a lightning strike. On
the topic of cost, Bonk teaches that its polyurethane composition is
“significantly less expensive than polyester polyols and thereby would
provide obvious economic advantages.” Bonk 1:27–30. Appellant does not
explain how this would not be the case.
Our reviewing court has provided instruction that “preponderance of
the evidence is the standard that must be met by the PTO in making
rejections.” In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). In view of
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the above, it is not made clear how Bonk fails to be analogous art under the
“preponderance of the evidence” test. Caveney, 761 F.2d at 674. Said
another way, it is not made clear how Bonk could be said to not be pertinent
to the problems facing Appellant. See also Ans. 20 (addressing MPEP
§ 2141.01(a) (9th ed. Rev. 10.2019, rev. June 2020), “Analogous and
Nonanalogous Art”). We have also been instructed that “[a] reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, 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.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Furthermore, in the matter before us, we understand that one of
Bonk’s methods of manufacture is directed to injection molding of
polyurethane compounds, which generally are not subject to such a process
because of the heat involved. See Bonk 1:43–56; Ans. 22 (“[t]he material of
Bonk is not only produced by injection molding”). Regarding injection
molding, Appellant contends that “[n]owhere in Driver, nor the present
application, is there any concern or discussion about issues regarding
injection molding using a polyurethane material.” Appeal Br. 7. However,
this contention by Appellant misses the point. The question is not whether
Driver, or the present application, raised such an issue in the first place;
instead, the question is whether Bonk’s teachings would, as expressed
above, “have commended itself to an inventor’s attention” when considering
the problems faced. Clay, 966 F.2d at 659.
Based on the above, we are of the opinion that Bonk would have been
a resource subject to such an investigation by a skilled person. Thus, we
disagree with Appellant that “one skilled in the art would have no rationale
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to look to Bonk to find a material for production of a protective cover for a
wind turbine blade with increased wind erosion resistance.” Appeal Br. 7.
Additionally, and in view of Driver’s teaching that polyurethane is a
suitable material for use in wind turbine blades (see Driver ¶ 28), we agree
with the Examiner’s assessment that a skilled person would “be motivated to
pursue material selections within the broad class of polyurethane materials.”
Ans. 21; see also id. at 22. Consequently, and in view of the above, we are
not persuaded by Appellant’s contentions that Bonk is non-analogous art.
Accordingly, we do not fault the Examiner for combining Driver and Bonk
in reaching this rejection because we find the two references to pertain to the
field of invention and the problems encountered.
Appellant also addresses the Examiner’s motivation to combine
Driver and Bonk stating that a skilled person “would have no motivation or
rationale to depart from Driver’s teaching and look to another non-analogous
art such as Bonk to solve the problem of leading edge wear or erosion in
wind turbines.” Appeal Br. 8. We disagree because the factors that
rendered Bonk analogous art above (i.e., cost savings, robustness) are the
same factors the Examiner expressed for combining Driver and Bonk. See
Final Act. 7; Ans. 21. Appellant is not persuasive that these reasons to
combine are in error.
In summation, we sustain the Examiner’s rejection of claims 46–53,
57, 58, 60, 61, 63, and 64 as unpatentable over Driver and Bonk.
The rejection of claims 59 and 62
as unpatentable over Driver, Bonk, and Koonce
Appellant argues these two claims together. See Appeal Br. 8–9. We
select claim 59 for review, with claim 62 standing or falling with claim 59.
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Claim 59 additionally recites “wherein the polyurethane comprises an
UV stabilisator and/or colour pigment(s).” The Examiner relies on the
additional reference to Koonce for such teachings (although Bonk teaches
that the elastomers can also include “coloring agents” (Bonk 6:32–37)).
Final Act. 10 (referencing Koonce ¶ 68). Indeed, paragraph 68 of Koonce
states that “[e]lastomeric polyurethanes of the invention optionally include
. . . UV stabilizers . . . colorants” and the like.
Appellant does not dispute such teachings, but instead contends that
“the Examiner erred in concluding that Koonce is analogous art.” Appeal
Br. 8. This is because “Koonce is not pertinent to the problem of improving
wind erosion resistance of wind turbine blade edges.” Appeal Br. 8.
Koonce was not relied on for this purpose (i.e., improving wind erosion
resistance), but instead for teaching the additional limitation of a
polyurethane that “comprises an UV stabilisator and/or colour pigment(s).”
Final Act. 10. Appellant does not explain how Koonce’s teaching of
applying stabilizers and pigments to a polyurethane compound (such as
Bonk’s) renders Koonce non-analogous art.
We are not persuaded by Appellant’s contention. We sustain the
Examiner’s rejection of claims 59 and 62 as being unpatentable over Driver,
Bonk, and Koonce.
The rejections of: (a) claims 65–67, 69–80, and 84 as unpatentable over
Driver, Bonk, and Hibbard; (b) claim 68 as unpatentable over Driver, Bonk,
Hibbard, and Wirt; and, (c) claim 79 as unpatentable over Driver, Bonk,
Hibbard, and Koonce
Appellant does not separately argue these rejections. See Appeal Br.
9–10. Instead, Appellant repeats the above arguments that “Bonk is not
analogous art” and “the Examiner erred in concluding that Koonce is
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analogous art.” Appeal Br. 9. These assertions are not persuasive of
Examiner error. Accordingly, we sustain the rejections of claims 65–80, and
84 as unpatentable of Driver, Bonk, and Hibbard alone, or combined with
either of Wirt or Koonce.
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
46–53, 57,
58, 60, 61,
63, 64
103 Driver, Bonk 46–53, 57,
58, 60, 61,
63, 64

59, 62 103 Driver, Bonk, Koonce 59, 62
65–67, 69–
80, 84
103 Driver, Bonk, Hibbard 65–67, 69–
80, 84

68 103 Driver, Bonk,
Hibbard, Wirt
68
79 103 Driver, Bonk,
Hibbard, Koonce
79
Overall
Outcome
46–53, 57–
80, 84

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