Ex Parte Hänisch

Patent Trial and Appeal Board

Apr 11, 2016

12992419 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/992,419 11/12/2010
22116 7590 04/13/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Ringo Hanisch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008P09235WOUS 7263
EXAMINER
WEA VER, SUE A
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
04/13/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RINGO HANISCH
Appeal2014-003409
Application 12/992,419
Technology Center 3700
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 14, 15, 18, 19, and 22-26. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest is Siemens Aktiengesellschaft." (Appeal Br. 3.)
Appeal2014-003409
Application 12/992,419
STATEMENT OF THE CASE
The Appellant's invention "relates to a tarpaulin device for a tower
section of a wind turbine." (Spec. 1, lines 7-8.)
Illustrative Claim2
14. A tarpaulin device for a tower section of a wind turbine, the
tarpaulin device comprising:
an adjustable opening; and
a flap element for opening and closing the adjustable
openmg,
wherein a location and/or a size of the adjustable opening
in the tarpaulin device are adaptable to a functional element of
the tower section,
wherein the flap element is divided in sub flap elements
in such a way that by a desired shape of the adjustable opening
is provided by individually removing one or more of sub flap
elements.
de Winter
Semons
Celestino
References
us 4,252,850
us 5,311,648
us 5,445,200
Rejections
Feb.24, 1981
~v1ay 17, 1994
Aug. 29, 1995
I. The Examiner rejects claims 14, 15, 18, 19, and 23-26 under
35 U.S.C. § 103(a) as unpatentable over Semons and Celestino. (Final
Action 3.)
II. The Examiner rejects claims 25 and 26 under 35 U.S.C. § 112,
second paragraph, as indefinite.3 (Id. at 2)
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 10-11 of the Appeal Brief.
3 The Examiner withdraws the rejection of claim 18 under 35 U.S.C. § 112,
second paragraph. (See Final Action 2; Answer 6.)
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Application 12/992,419
ANALYSIS
Claim 14
Independent claim 14 is directed to "[a] tarpaulin device" comprising
"an adjustable opening" and "a flap element for opening and closing the
adjustable opening." (Claims App.) The Examiner finds that Semons
teaches a tarpaulin device that comprises an opening and a flap element for
opening and closing this opening. (See Final Action 3.) In Semons's
disclosed tarpaulin device 10, a preferably square or rectangular opening can
be re-closed and re-opened by flaps 56 and 58. (Semons, col. 2, lines 27-31,
see also id. Figs. 4, 5.)
Independent claim 14 requires the "flap element" to be "divided into
sub flap elements." Examiner finds that Celestino teaches dividing a flap
into a plurality of sub flaps to permit an opening to be adjusted for a
projecting element. (See Final Action 3.) In Celestino, "[a] triangular
opening 94 is sealed by three rectangular panel flaps 98, 100, and 102" to
"allow arm 90 of [a] car rack to be easily pushed through the opening when
mounted on the car rack without first peeling back the covers." (Celestino,
col. 5, line 62 - col. 6, line 4; see also id. Figs. 9, 11.) The Examiner
determines that "[t]o have formed the flap of Semons as a plurality of sub
flaps for adjustment purposes would have be obvious in view of Celestino."
(Final Action 3.)
The Appellant argues that Celestino's panel flaps 98, 100 and 102 are
not "sub flaps" but are instead "separate flaps." (Appeal Br. 6-7.) We are
not persuaded by this argument because the Examiner's rejection does not
require a bodily incorporation of Celestino' s triangular-opening-covering
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Application 12/992,419
panels (be they flap or sub flaps) into Semons's tarpaulin 10.4 Instead, in
view of Celestino' s teaching that the cover for an opening in a tarpaulin can
be divided into separate flap pieces, a person of ordinary skill in the art
would infer that an opening-covering flap (i.e. flap 56 and/or flap 58) in
Semons' s tarpaulin 10 could likewise be divided into separate flap pieces for
adjustment purposes. 5 The Appellant does not adequately address why this
modification to Semons' s tarpaulin 10 would not result in "sub flaps."
Independent claim 14 further requires the flap element to be divided
in sub flap elements "in such a way that by a desired shape of the adjustable
opening is provided by individually removing one or more of sub flap
elements." (Claims App.) The Examiner finds that Semons and Celestino
teach sub flaps that would be individually removable as required by
independent claim 14. (See Final Action 3.) The Examiner explains that the
hook and loop material taught by the prior art references would permit the
sub flaps in Semons's modified tarpaulin 10 to be opened individually. (See
Answer 5.)
The Appellant argues that "[ o ]ne skilled in the art would understand
that removable means to completely detach," and Semons' flaps are merely
4 See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather, the
test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art").
5 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (An
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim" as "the inferences and
creative steps that a person of ordinary skill in the art would employ" can be
taken into account).
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Application 12/992,419
"releasably coupled" by hooks and loops. (Appeal Br. 6.) We are not
persuaded by this argument because we give independent claim 14 its
broadest reasonable interpretation consistent with the Specification. 6 When
we do so, a sub flap in Semons' s modified tarpaulin 10 would be
individually removed as required by independent claim 14 when it is
releasably uncoupled from the hooks/loops on the mating flap or sub flap.
This construction is aligned with the dictionary definition of the word
"remove" in that the sub flap is moved or shifted from one position to
another. 7 Also, this interpretation is consistent with the Specification in that
the discussion of how "each sub flap element is removable individually" to
adjust the shape of the opening (see Spec. 4, lines 19-33) is separate from
the discussion of how "the flap element is removably fixed to the tarpaulin
device" to prevent flittering (id. at 4, line 34 to 5 line 9). 8 Further, contrary
to the Appellant's contentions otherwise, we find no evidence in the record
6 "[T]he PTO must give claims their broadest reasonable construction
consistent with the specification." See In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed.Cir.2004). There is "a 'heavy presumption' that a
claim term carries its ordinary and customary meaning." CCS Fitness, Inc.
v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002). This heavy
presumption can be overcome if the Specification sets forth "an explicit
definition for the claim term." Johnson Worldwide Assocs., Inc. v. Zebco
Corp., 175 F.3d 985, 990 (Fed.Cir.1999). Here, the Appellant does not point
to, and we do not find, such a definition in the Specification.
7 "Remove" is defined in a dictionary as "to move from a place or position;
take away or off," and as "to move or shift to another place or position;
transfer." http://www.dictionary.com/browse/remove (last visited April
2016).
8 We further note that dependent claim 18 (not separately argued) recites that
"the flap element is removably fixed to the tarpaulin device." (Claims App.)
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implicating that one of ordinary skill in the art would understand
"individually removing" a component as requiring a complete detachment of
such a component. 9
Independent claim 14 further requires that "a location and/or a size of
the adjustable opening in the tarpaulin device are adaptable to a functional
element of the tower section." (Claims App.) The Appellant argues that this
limitation should be considered functional language that "provides
positioning structure and or size structure of the opening." (Reply Br. 2.)
The problem with the Appellant's position is that independent claim 14 does
not specify the region of the tower section being tarped, does not specify the
position of the functional element relative to the tarped region of the tower
section, and does not specify the size or shape of the functional element.
Moreover, the Specification reflects that term "functional element" denotes a
component that can have a wide range of sizes and shapes, in that it
constitutes an element "for getting in functional contact with other
transportation mechanics." (Spec. 2, lines 15-25.) As such, the adjustable
opening in Semons' s modified tarpaulin device 10 is adaptable to a
functional element (e.g., a rectangular functional element) that corresponds
to the shape, size, and position of its rectangular opening. Tellingly, the
Appellant does not explain what positioning structure and/or size structure is
lacking in the adjustable opening in Semons' s modified tarpaulin device, so
as to preclude it from meeting the requirements of independent claim 14.
9 We review claim construction issues de novo (see In re Donaldson Co., 16
F.3d 1189, 1192 (Fed. Cir. 1994)) and thus, need not adopt what was
allegedly "clear to the Examiner" regarding what is meant by the sub flap
being removable (see Reply Br. 5).
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The Appellant also challenges the Examiner's motivation to combine
the teachings of the prior art. (Appeal Br. 7-8.) This argument is premised
upon independent claim 14 requiring the complete detachment of a sub flap,
and thus allegedly rendering Semons's tarpaulin inoperable. (See id.) We
are not persuaded by this argument because, as discussed above,
independent claim 14 does not require a complete detachment of a sub flap.
The Appellant also argues that "an objective reason [for the
combination] was not provided." (See Reply Br. 4.) We are not persuaded
by this argument because the Examiner articulates that the proposed
modification to Semons' s tarpaulin would have been done "for adjustment
purposes." (Final Action 3.) The Appellant does not point, with
particularity, to flaws in this articulated reason for the combination.
Accordingly, the Appellant does not establish the Examiner errs in
determining that the tarpaulin device recited independent claim 14 would
have been obvious over Semons and Celestino. Thus, we sustain the
Examiner's rejection of claim 14 under 35 U.S.C. § 103(a) (Rejection I).
Claims 15, 18, 19, and 22-24
These claims depend directly or indirectly from independent claim 14
(see Claims App), are rejected on the same ground (see Final Action 2), and
are not argued separately (see Appeal Br. 5-8). Thus, we sustain the
Examiner's rejection of claims 15, 18, 19, and 22-24 under 35 U.S.C.
§ 103(a) (Rejection I).
Claims 25 and 26
Claim 25 is directed to "[a] method of fixing a tarpaulin device as
claimed in claim 14 to a tower section of a wind turbine," and claim 26 is
directed to "[t]he method of claim 25." (Claims App.) These method claims
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Application 12/992,419
are rejected on the same ground as independent claim 14 (see Final
Action 3) and the Appellant refers only to the unpersuasive arguments
discussed above in our analysis of independent claim 14. 10 Accordingly, for
the same reasons discussed above, the Appellant does not establish that the
Examiner errs in determining that the recited methods would have been
obvious over Semons and Celestino. Thus, we sustain the Examiner's
rejection of claims 25 and 26 under 35 U.S.C. § 103(a) (Rejection I).
The Examiner also determines that method claims 25 and 26 are
indefinite. (See Final Action 2.) The Appellant "disagrees with the
Examiner" and "submits that claim 25 properly depends from claim 14."
(Appeal Br. 5.) However, if claim 25 is considered a dependent claim, it is
construed to include all of the limitations of independent claim 14. 11 If this
is so, claim 25 seems to re-introduce elements of the tarpaulin device that
were already introduced in independent claim 14. 12 We agree with the
Examiner that this "double inclusion" results in confusion and renders
claim 25, and thus claim 26, indefinite. Thus, we sustain the Examiner's
rejection of claims 25 and 26 under 35 U.S.C. § 112, second paragraph
(Rejection II).
10 Specifically, the Appellant refers to the arguments that Semons and
Celestino do not teach or suggest "removing one or more flap elements,"
and/or do not teach or suggest "sub flaps." (Appeal Br. 8.) The Appellant
also refers to the argument that "there is no motivation to combine the
teachings of Semons with the teachings of Celestino." (Id.)
11 See 35 U.S.C. § 112, fourth paragraph.
12 For example, independent claim 14 recites that the tarpaulin device
comprises "an adjustable opening" while claim 25 recites the steps of
"adapting a location and a size of an adjustable opening in the tarpaulin
device." (Claims App., emphasis added.)
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Application 12/992,419
DECISION
We AFFIRM the Examiner's rejections of claims 14, 15, 18, 19,
and 22-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9