Ex Parte Bertolotti

Patent Trial and Appeal Board

Aug 7, 2017

12544447 (P.T.A.B. Aug. 7, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/544,447 08/20/2009 Fabio P. Bertolotti PA0011636US;67010-318PUS1 9372
26096 7590 08/09/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
WHITE, DWAYNE J
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/09/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FABIO P. BERTOLOTTI
Appeal 2015-004522
Application 12/544,447
Technology Center 3700
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1—3, 9, 12—17, and 19-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We are informed that Hamilton Sundstrand Corporation is the real party in
interest.
Appeal 2015-004522
Application 12/544,447
CLAIMED SUBJECT MATTER
The claims are directed to a wind turbine as wind-direction sensor.
Claims 1, 9, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of wind turbine control comprising:
determining wind tangential velocity, averaged over a
rotor swept plane, from an instantaneous measurement of a rotor
azimuth angle and a rotor teeter angle; and
adjusting a wind turbine yaw angle of a wind turbine in
response to the determined wind tangential velocity.
REJECTIONS
I. Claims 1—3, 9, and 12—22 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Final Act.
9-11.
II. Claims 1—3, 9, 12—17, and 19-22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over U.S. Patent Publication No. 2009/0317250 A1
to Gamble et al. (Gamble) in view of J.F. Manwell et al., Wind Energy
Explained — Theory, Design and Application (2d. ed. 2002) (Manwell).
OPINION
Rejection I
Section 112, first paragraph, of the Patent Statute requires that the
specification of a patent describe “the manner and process of making and
using [the invention], in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains ... to make and use
the same.” 35 U.S.C. § 112, first paragraph. A specification is not enabling
if a person of ordinary skill in the art would be unable to practice the
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Application 12/544,447
invention without “undue experimentation.” In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). Factors relevant to a determination of whether undue
experimentation would be necessary include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
Id. (footnote omitted). When rejecting a claim for lack of enablement, the
initial burden is on the Examiner to set forth “a reasonable explanation” of
why he or she believes the specification is not enabled. In re Wright, 999
F.2d 1557, 1561—62 (Fed. Cir. 1993). The burden then shifts to the
applicant to provide “suitable proofs indicating that the specification is
indeed enabling.” Id. at 1562. The knowledge imputed to one of ordinary
skill in the art has limited usefulness in filling gaps in the disclosure.
To the extent that ALZA argues that the knowledge of a person
of ordinary skill in the art satisfies the enablement requirement,
we disagree. As this court has repeatedly stated, “the rule that a
specification need not disclose what is well known in the art is
‘merely a rule of supplementation, not a substitute for a basic
enabling disclosure.’” Auto. Tech.[Int’l. Inc. v. BMWofN. Am.,
Inc.], 501 F.3d [1274,] 1282 [Fed. Cir. 2007] (quoting Genentech
[Inc. v. Novo Nor disk A/S], 108 F.3d [1361,] 1366) [Fed. Cir.
1997]. To satisfy the plain language of § 112, | 1, ALZA was
required to provide an adequate enabling disclosure in the
specification; it cannot simply rely on the knowledge of a person
of ordinary skill to serve as a substitute for the missing
information in the specification.
ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940-41 (Fed. Cir. 2010).
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Application 12/544,447
Sensors required but not enabled
The Examiner finds claims 1—3, 9, and 12—22 are not enabled by the
Specification. Final Act. 9—11. In connection with claims 1—3, the
Examiner concludes that some sensor must be used in order to perform the
determining step. Ans.13. The remaining claims, i.e., claims 9 and 12—22,
explicitly require a sensor or sensor system. Appeal Br. 21—23 (Claims
App.). The Examiner finds that the only sensor described in the
Specification is the rotor (Ans. 14), a finding Appellant does not appear to
dispute. See, e.g., Appeal Br. 5 (“The Specification at paragraph 17—32
describes the rotor as the sensor as it relates to the deduction of wind
direction, averaged over the rotor plane;” “Appellant’s Specification
describes the rotor as the sensor”), Appeal Br. 8 (quoting from Spec. 6,
17, and 21.) The Examiner then finds that there is no disclosure of how one
would use the rotor as the sensor. Ans. 14. Specifically, the Examiner finds
“no disclosure of the sensor is provided and therefore, no disclosure of
measuring any parameter is provided in the specification.” Id.
In supporting the finding that there is no enablement of the claims, the
Examiner reviews the factors required by Wands, supra. The Examiner
finds the breadth of the claims is large because “sensor” and “sensor system”
are claimed generically without any specific limitation. Final Act. 9—10.
The Examiner finds that the nature of the invention requires more
description than is provided because, if the rotors are to be the sensors, then
the sensors are moving when measurements are taken, complicating the
engineering required, but with no explanation provided in the Specification
as to how the rotors function as sensors. Id. at 10. The Examiner notes the
prior art in general describes sensors and where they are positioned because
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Application 12/544,447
the location is important to the accuracy of the measurements provided. Id.
Significantly, the Examiner also notes that no direction has been provided by
Appellant in the Specification for how to implement the sensors. Id.
Accordingly, the Examiner also finds that extensive experimentation would
be required to implement the claimed invention. Id.
Appellant argues that claims 1—3 and 12 do not recite a sensor.
Appeal Br. 4. Appellant confirms that the “[specification describes the
rotor as the sensor” and asserts it is described “in a way to enable one of
ordinary skill to make or use the invention.” Appeal Br. 5—6.2 Appellant
argues:
The Specification at paragraph 17-32 describes the rotor as the
sensor as it relates to the deduction of wind direction, averaged
over the rotor plane, and including deduction of measurements
of other factors which effect teeter angle with a dynamic
equation. Paragraph 21 further discloses, “the use of the rotor 24
as the sensor,” (Specification, Par. 21). Accordingly, Appellant
submits the enablement rejection must be reversed.
Appeal Br. 5.
Appellant argues that if sensors are not mentioned in claim 1, the
failure to enable a sensor cannot bar patentability. Appeal Br. 6. However,
Appellant does not address the central issue, namely, whether the description
enables others skilled in the art to practice the claimed invention. Appellant
does not argue that the claimed method can be practiced without sensors of
some sort, and Appellant has presented no evidence to counter the
Examiner’s finding that extensive experimentation would be required in
2 Appellant appears to misquote Specification, 121, which clearly states “the
sensor system 56 are [sic] generally protected within the nacelle 26.” Spec.
4. The Specification does not explain how the sensor system and rotor-as-
sensor can be within the nacelle.
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order to execute the invention following the Specification. See Appeal Br.
6—7. Instead, Appellant argues that the rotor is repeatedly described as a
sensor and that a person of ordinary skill could follow the Specification and
practice the claimed methods and make the claimed turbine. Appeal Br. 8.
Calling a rotor a sensor does not make it so. We have examined the
Specification and agree with the Examiner that there is no description of
how to use the rotor as a sensor. Claim 1 does not require any particular
sensor, but some source of information is required in order to perform the
determining step. The Specification describes the rotor as a sensor that
makes the measurement of the wind direction, but there is no disclosure of
how this is accomplished.3 Nor is there any evidence in the record that one
of ordinary skill in the wind turbine art “could make or use the invention
without undue experimentation” as alleged by Appellant. Appeal Br. 8.
Therefore, after reviewing the evidence and arguments, we find no error in
the rejection of claims 1—3, 9, and 12—22 for failure to enable the rotor as a
sensor.
Linkage between Tangential Wind Velocity and Yaw Angle
Unexplained
The Examiner also finds that there is no disclosure of a link between
the tangential wind velocity and yaw angle. Final Act. 10—11. In view of
3 The Specification describes the relationship of many quantities, including
the tangential wind velocity, that depend on the teeter angle, P (beta), and
rotor azimuthal angle, 'T (Psi). Spec. ^ 28. The Teeter angle is the angle
between the rotors axis of rotation and a horizontal plane; the rotor
azimuthal angle is the position of the rotor in its circular path. It appears
neither angle could be measured using the rotor as a sensor, and the
Specification does not describe how these angles are to be measured.
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Application 12/544,447
our affirmance of the first basis for rejecting the pending claims for lack of
enabling disclosure, we need not address the second.
Rejection II
All the pending claims have been rejected as obvious in view of
Gamble and Manwell. The Examiner finds that Gamble teaches all the steps
of claim 1 except for determining the wind tangential velocity averaged over
a rotor swept plane. Final Act. 11. The Examiner finds that Manwell
teaches this step. Id. at 12.4 The Examiner further finds that Manwell
teaches that the tangential wind velocity and yaw are related. Id. The
Examiner concludes:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the wind turbine
control method of Gamble by using the formula taught by
Manwell to determine the tangential velocity because the
configuration was known in the art and could have been
implemented by one of ordinary skill with predictable results.
Final Act. 12.
Appellant makes a shared argument for claims 1—3, 9, 12—17, and 19-
22, additional arguments for claims 16, 17, and 19—22 and a third argument
for claims 12 and 22. Appeal Br. 10—19.
Claims 1—3, 9, 12—17, and 19—22
Appellant first argues that the Examiner is using hindsight, and
supports this assertion with the assessment that the art relied on does not
teach “using the wind tangential velocity over a rotor swept plane to adjust
yaw angle.” Appeal Br. 11. The Examiner responds with citations to
Manwell disclosing that the tangential wind velocity (which is other than
4 The Examiner initially cited the wrong page in Manwell, but in the Answer
cites to page 184, equation 4.3.73 for this determining step.
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zero only when yaw needs to be adjusted) and yaw error are linked. Ans.
19. Appellant replies that “the Examiner does not provide any evidence of
how any alleged relationship these two components allegedly relate to the
claimed features.” Reply Br. 7.
We are not persuaded by Appellant that the Examiner is using
impermissible hindsight. The Examiner finds that Gamble measures rotor
azimuth angle and rotor teeter angle to determine yaw angle. “Gamble
teaches measuring both components as claimed and then adjusting the yaw if
an error is detected.” Final Act. 11; Ans. 4. The Examiner finds Manwell
teaches determining the tangential wind velocity, averaged over a rotor
swept plane, citing from Manwell the same equation Appellant uses to
extract the tangential wind velocity from measured quantities. Ans. 19,
citing Manwell Equation 4.3.73 and p.184. The Examiner also notes that
Manwell describes the relationship between the tangential wind velocity and
yaw (Ans. 19, citing Manwell Equation 4.3.48), and concludes it would have
been obvious to use the Manwell-derived tangential wind velocity to control
yaw in place of Gamble’s rotor azimuth and rotor teeter angle. Final Act.
12; Ans. 5. Thus the Examiner relies on knowledge which was within the
level of ordinary skill in the art and not on knowledge gleaned only from
Appellant’s disclosure. We find no improper reliance on hindsight. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellant next argues that the combination proposed by the Examiner
would not produce a predictable result. Appeal Br. 12. First, Appellant
contends that the Examiner has not shown that one of ordinary skill in the art
could have combined Gamble and Manwell by known methods or that in
combination each element merely performs the same function as it does
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separately, and in addition Appellant contends that the Examiner has failed
to show that one of ordinary skill in the art would recognize that the results
of the combination were predictable. Id. at 13. Appellant argues that
Gamble does not take into account the tangential wind velocity and
determines the yaw angle in a way different from Man well’s and that “the
Examiner points to no evidence that Gamble could adapt the wind tangential
velocity into Gamble’s determination of normal range and yaw error.” Id.
Further, Appellant argues that even if there is the general link between yaw
angle and tangential velocity, this does not establish a predictable result.5
Id. at 13—14.
The Examiner responds that “it is predictable to substitute Manwell’s
yaw angle determination method for Gamble’s method because both result
in the same thing, the angle the turbine needs to be yawed.” Ans. 20. The
Examiner continues by noting that “the substitution of one know [sic]
method of measuring yaw angle for another would suggest to one of
ordinary skill in the art that they are substitutes for one another. . . . Gamble
can measure numerous different parameters as noted in [Gamble] paragraphs
30-31.” Ans. 20-21. Gamble specifically suggests that “the yaw controller
. . . may be modified based on the desired application.” Gamble 1107.
Appellant crystallizes his position by stating that merely finding that
both Gamble and Manwell accomplish the same goal (of yaw adjustment)
and can be combined with known methods because they are both using
measurements to calculate yaw does not establish a combination by known
methods, nor that each element performs the same function as it does
5 This last argument is made without evidentiary support, and we do not
consider it any further.
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separately. Appeal Br. 15. According to Appellant, the Examiner’s
proposed combination “is not a simple substitution, and the Examiner cannot
ignore Gamble’s specific disclosure of calculating yaw error in a specific
way for a specific reason. . . . Appellant’s point is that the Examiner is
picking and choosing among references to recreate Appellant’s claim
without such teaching from the references.” Appeal Br. 17—18.
Appellant appears to require bodily incorporation or plug-in
substitution of one component for another before the Examiner can be
sustained making an obviousness rejection. However, the Examiner finds
that the combination of the teachings of Gamble and Manwell renders the
claimed subject matter obvious. One of ordinary skill in the art, especially
an art as sophisticated as control systems for wind turbines, is not an
automaton.6 KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). We
agree with the Examiner that substituting the measurement of Manwell for
that of Gamble would have been obvious. Gamble even suggests that “the
yaw controller . . . may be modified based on the desired application.” |
107. While some effort and skill would have been required to use the yaw
measurement of Manwell in Gamble, the level of skill is high, and we have
not been persuaded that the Examiner was wrong in his conclusion.
Claims 16, 17, and 19—22
Appellant argues claim 16 is improperly rejected because
Gamble does not disclose determining a current yaw rate using a
sensor. Therefore, one of ordinary skill would not consider it
obvious to use the method of Manwell in Gamble because there
6 Appellant does not dispute that one of skill in the art would refer to and
understand Manwell, which, with its reliance on the mathematics relating to
machine design and fluid mechanics, leads to the conclusion that the level of
skill in the art is quite high.
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Application 12/544,447
is no evidence that such a proposed combination would lead to
predictable results since Gamble does not disclose determining a
current yaw a rate using a sensor.
Appeal Br. 18. See also Reply Br. 8. The Examiner responds noting that
Gamble teaches using multiple sensors to measure many parameters (citing
Gamble H 30, 31) and adjusting the controller depending on those
parameters (citing Gamble 1110). Ans. 23. Manwell teaches parameters
that need to be measured including the yaw rate. Id. The Examiner reasons
that the yaw rate would be measured when the Manwell calculations are
applied to the Gamble turbine, “[otherwise, ManwelTs calculations could
not be completed. This is obvious to one in the art because to use Manwell
you need to measure all the required parameters.” Id. We agree with the
Examiner that Gamble’s teaching of the use of sensors to detect ongoing
motions would lead one of ordinary skill, when confronted with Manwell’s
calculations which include a variable for the rate of yaw, to use a sensor to
measure that rate. Accordingly, we are not persuaded the Examiner erred in
rejecting claim 16. Appellant argues claims 17 and 19-22 together with
claim 16 (Appeal Br. 18), and in view of the foregoing we find no error in
the rejection of these claims.
Claims 12 and 22
Claim 12 depends from claim 1 adding the step of “determining the
wind averaged velocity based on the determined wind tangential velocity.”
Appeal Br. 22 (Claims App.). Claim 22 depends from claims 21 and 16,
adding limitations like those of claim 12. Appellant argues claims 12 and 22
together. Appeal Br. 18—19. We select claim 12 as representative, and
claim 22 stands or falls with claim 12. 37 C.F.R. § 41.37(c)(l)(iv).
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The Examiner finds that Gamble and Manwell teach the limitations of
claim 12. “The combined references teach measuring the necessary wind
speed components that can then be combined to reach average wind
velocity. . . . Combining the necessary components is known in the field.”
Final Act. 15. The Examiner finds Gamble teaches measuring wind speed,
citing Gamble paragraph 142. Ans. 23. The Examiner notes that Manwell
teaches measuring windshear (equation 4.3.73) and tangential wind speed
(equation 4.3.73). Id. at 24. These are the components of “averaged wind
velocity.” Id. The Examiner concludes that “[sjince all the components are
measured by the references during operation, the averaged wind velocity
could be calculated. This equation is known to those in the field because it
is a known equation.” Id. The Examiner relies on Appellant’s disclosure
only as a matter of claim construction “to show the formula for averaged
wind velocity.” Id. The Examiner concludes that because the two
references measure all the necessary components, “one of ordinary skill
could calculate the averaged wind velocity as claimed when looking to
Gamble and Manwell.” Id.
Appellant asserts that the Examiner’s finding that the components of
averaged wind velocity are measured by the prior art “is insufficient to
establish prima facie obviousness” because the Examiner does not provide
“any objective reason ... to modify Gamble as proposed.” Appeal Br. 19.
Appellant concludes that the Examiner is using impermissible hindsight. Id.
We are not persuaded by this brief argument that the Examiner erred.
Appellant does not challenge the Examiner’s finding that the three vector
components of wind averaged velocity are taught by the cited references.
Appeal Br. 18—19. Appellant cannot claim exclusive rights to the
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mathematical formula that combines the three vector components into wind
averaged velocity because that formula reflects a law of
nature. Parker v. Flook, 437 U.S. 584, 585 (1978). Nor do we find
impermissible hindsight in the Examiner’s reasoning.
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants do not
challenge the Examiner’s finding (Final Act. 15) that it was known to
combine the components of the wind averaged velocity. Appeal Br. 18—19.
Given that the wind averaged velocity as claimed is calculated using a
known formula with known measured variables as inputs and that in claim
12 the resulting vector sum is not used for any particular purpose, we find
the Examiner’s rationale sufficient to establish a prima facie case of
obviousness. Appellant must do more than deny the adequacy of the
Examiner’s findings. 37 C.F.R. § 41.37(c)(l)(iv). After reviewing the
evidence and arguments, we are not persuaded that the Examiner errs in
rejecting 12 and 22.
DECISION
The Examiner’s rejection of claims 1—3, 9, 12—17, and 19—22 is
affirmed.
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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)(l)(iv).
AFFIRMED
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