Ex Parte CochranDownload PDFPatent Trial and Appeal BoardSep 17, 201211345931 (P.T.A.B. Sep. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/345,931 02/01/2006 Bradley C. Cochran J-CALD.1001 1447 56703 7590 09/17/2012 JON M. DICKINSON, P.C. 8015 S.E. 31st Ave PORTLAND, OR 97202 EXAMINER WHITE, DWAYNE J ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 09/17/2012 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 BRADLEY C. COCHRAN Appeal 2010-007943 Application 11/345,931 Technical Center 3700 Before LINDA E. HORNER, JAMES P. CALVE, and REMY J. VANOPHEM, Administrative Patent Judges. VANOPHEM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007943 Application 11/345,931 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal. 1. A rotary, fluid-flow-to-mechanical/electrical power-conversion device comprising[:] a generally cup-shaped, squirrel-cage rotor having a rotational axis, and including plural, circumferentially spaced, elongate, transverse-cross-sectionally arcuate airfoil blades having leading and trailing edges, and being sized and disposed about the rotational axis of the rotor with their respective long axes substantially paralleling said rotational axis, and selected dimensioning in said rotor whereby the ratio of blade-to-blade, trailing-edge-to-leading-edge spacing a to blade transverse chord length b resides in a general range of about 0.24 to about 0.4. REJECTIONS1 Claims 5 and 9 are rejected under 35 U.S.C. § 112, second paragraph because the Examiner determined that there is insufficient antecedent basis for the recitation “blade-to-blade circumferential spacing.” Claims 1-3, 5-7, 9-11, and 13-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Townsend (US 5,632,599; Iss. May 27, 1997) in view of the teachings of Farrar (US 5,553,996; Iss. Sept. 10, 1996) 1 The Examiner has withdrawn the rejection of claims 1-16 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement and the rejection of claims 2, 6, 10, and 14 under 35 U.S.C. § 112, second paragraph, as being indefinite. See Ans. 2. Appeal 2010-007943 Application 11/345,931 3 ANALYSIS Claims 5 and 9 as indefinite for lack of antecedent basis The Examiner rejected claims 5 and 9 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention. Specifically, the Examiner states that there is insufficient antecedent basis for the limitation “blade-to-blade circumferential spacing” in lines 1 and 2 in each of claim 5 and 9. Both dependent claims 5 and 9 depend from independent claim 1 and recite the language “…blade-to-blade circumferential spacing…” in lines 1 and 2 of each claim. Independent claim 1 recites the language “…the ratio of blade-to-blade, trailing-edge-to- leading-edge spacing….” The Appellant responds to this rejection by stating in the brief “…changing the word “said” to “a” in both claims preceding the word “circumferential” will resolve this rejection, and Applicant will make an appropriate amendment once claims are allowed.” App. Br. 5. Appellant has not presented any argument persuading us of error in the rejection of claims 5 and 9 as indefinite for lack of antecedent basis. Accordingly, we sustain the Examiner’s rejection of claims 5 and 9 as indefinite for lack of antecedent basis. Claims 1-3, 5-7, 9-11, and 13-15 unpatentable over Townsend and Farrar Appellant argues the rejected claims as a group. App. Br. 7. We select claim 1 as representative, and claims 2, 3, 5-7, and 13-15 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant argues claims 2, 10, and 14 as a subgroup. We address these claims below. Appeal 2010-007943 Application 11/345,931 4 The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17- 18 (1966). Further, the Federal Circuit has stated that “rejections on obvious 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner found that Townsend discloses the elements of the claim other than the “ratio of blade-to-blade circumferential spacing to blade transverse chord length or the blades being variable with a front ring.” The Examiner looks to Farrar, in that, Farrar teaches a wind turbine having variable angle of attack vanes where the spacing between the leading edge and the trailing edge of the vanes varies from zero (0) or fully closed, shown in Figure 4, to fully open, as shown in Figure 3. Therefore, the Examiner found that “during operation the vanes of Farrar would have the ratio as claimed by [Appellant] as the vanes are adjusted from the 0 position (Figure 4) to the open position (Figure 3).” Ans. 4. Therefore, the Examiner concluded that it would have been obvious at the time the invention was made to one of ordinary skill in the art to modify the vanes of Townsend with the teachings of Farrar by providing variable vanes for the purpose of regulating the power output of the wind turbine. Ans. 4. Appellant counters the Examiner’s rejection by stating “this spacing a is a critical dimension in applicant’s invention, and nothing in the cited and Appeal 2010-007943 Application 11/345,931 5 applied prior art suggests any consideration whatsoever being given to such a dimension.” App. Br. 7. Further, Appellant contends that the two applied references, whether taken alone or in combination, fail to meet the requirements of the claims regarding dimension “a,” which as stated in the Specification, are required under all operating conditions. Reply Br. 4 (citing Spec. 8, ll. 6-10). Appellant contends Townsend discloses a wind turbine with blades that are fixed, thus Townsend merely describes a squirrel cage rotor. Reply. Br. 4; see also Townsend col. 2, ll. 33-38. Appellant asserts that “Farrar describes a turbine with moveable blades, which may have an a:b ratio of zero to infinity, thus encompassing Applicant’s claimed range, however, Farrar is totally, completely silent regarding any ratio of a to b, and never mentions blade spacing or chord length.” Reply Br. 4. This argument does not persuade us of error in the Examiner’s determination that it would have been obvious to modify the vanes of Townsend to provide variable vanes, as taught by Farrar, for the purpose of regulating the power output of the wind turbine. See Ans. 4. This argument also mischaracterizes the Examiner’s finding that Farrar discloses vanes that are adjusted from a 0 position (Figure 4) to an open position (Figure 3), rather than to an infinity position as Appellant asserts, and does not persuade us of error in the Examiner’s finding that Farrar discloses a range of ratios that encompasses the claimed range. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. Such “a prima facie case of obviousness can be rebutted if the applicant (1) can establish the existence of unexpected properties in the Appeal 2010-007943 Application 11/345,931 6 range claimed or (2) can show that the art in any material respect taught away from the claimed invention.”2 In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (internal quotation marks and citation omitted). With respect to the first element of the test, an applicant may overcome such a prima facie case of obviousness by establishing that the claimed range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See Geisler, 116 F.3d at 1470; see also In re Kahn, 441 F.3d at 985-986 (“an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”). Appellant does not present sufficient evidence to establish the criticality of the claimed range by showing that the claimed range achieves unexpected results relative to the prior art. As noted supra, Appellant argues that Farrar is totally, completely silent regarding any ratio of “a” to “b” and never mentions blade spacing or chord length. Reply Br. 4. Appellant also argues that “the only source of any teaching regarding the dimensions a and/or b and the ratio therebetween is in Applicant’s teaching.” Reply. Br. 4. These arguments are not persuasive to rebut the Examiner’s prima facie case of obviousness. The Examiner provided adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to modify Townsend’s rotor with the adjustable vanes of Farrar. The resulting device possesses a range of the claimed ratios that encompasses the claimed range. 2 Appellant does not argue in this case that the art teaches away from the claimed invention as set forth in independent claim 1. Appeal 2010-007943 Application 11/345,931 7 Although Appellant argues that the dimension “a” is a critical dimension in the Appellant’s invention and nothing in the cited or applied prior art suggests any consideration being given to such dimension (App. Br. 7), Appellant does not point to any disclosure in the Specification or other evidence of the criticality of the claimed range. Nor does Appellant provide any evidence of unexpected results of the claimed range that would tend to establish that the claimed range is critical as compared to the prior art ranges. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (holding Appellant failed to show unexpected improvements in alloy strength for the claimed range of rhenium, even when the specification included several examples of compositions within the claimed range that showed the alloy strength improved). Appellant’s assertions that the claimed ratio plays an important role in achieving high-efficiency conversion of fluid-flow power to rotational-mechanical-power, or that the ratio within the claimed range is preferable, does not establish that the claimed range achieves unexpected results that are commensurate in scope with the claimed range and that are unexpected compared to the disclosed prior art range of Farrar. “It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (citation omitted). “When an article is said to achieve unexpected (i.e. superior) results, those results must logically be shown as superior compared to the results achieved with other articles.”) Id. We sustain the Examiner’s rejection of claims 1-3, 5-7, 9-11, and 13-15 as being unpatentable over the teachings of Townsend in view of the teachings of Farrar. Appeal 2010-007943 Application 11/345,931 8 Claims 2, 10, and 14 unpatentable over Townsend and Farrar Each of dependent claims 2, 10, and 14 include the limitation “wherein said rotor further includes a flow-facing front ring to which said blades are attached in a manner which accommodates angular-rotational feathering of the blades of about their respective long axes.” Appellant argues that Townsend does not teach or suggest the structure as recited in claims 2, 10, and 14, and that Farrar teaches away from feathering. App. Br. 9. In particular, Appellant asserts that one of ordinary skill in the art of aerodynamics would recognize that “feathering” requires orienting an airfoil so that it does not create lift while allowing airflow thereover. App. Br. 9-10. The Examiner determined that “feathering,” i.e., turning an airfoil so that it does not provide lift while allowing airflow thereover, “generally entails turning the blades to be parallel to the airflow.” Ans. 7. The Examiner then determined that the blades, as seen in Figure 3 of Farrar, are parallel to the airflow and thus would provide minimum lift. Id. We disagree with the Examiner’s position that turning the blades parallel to the airflow would provide no lift. As such, we disagree with the Examiner’s determination that the blades, as shown in Figure 3 of Farrar, are feathered. Accordingly, we do not sustain the rejection of claims 2, 10, and 14. CONCLUSION The rejection of claims 5 and 9 under 35 U.S.C. § 112, second paragraph is sustained. Appeal 2010-007943 Application 11/345,931 9 The rejection of claims 1-3, 5-7, 9-11, and 13-15 under 35 U.S.C. § 103(a) is sustained. The rejection of claims 2, 10, and 14 under 35 C.F.R. § 103(a) is reversed. DECISION The decision of the Examiner is AFFIRMED-IN-PART. 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 hh Copy with citationCopy as parenthetical citation