Ex Parte KOPONEN et al

Patent Trial and Appeal BoardFeb 12, 2019

14717677 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/717,677 05/20/2015 2292 7590 02/14/2019 BIRCH STEW ART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East FALLS CHURCH, VA 22042-1248 FIRST NAMED INVENTOR Mikko KOPONEN 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. 6869-0108PUS 1 2957 EXAMINER TRUONG, MINH D ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 02/14/2019 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 MIKKO KOPONEN and TUOMAS VUOLLE-APIALA Appeal 2018-005351 Application 14/717 ,677 Technology Center 3600 Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and KENNETH G. SCHOPPER, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's rejections of claims 1, 2, 7-16, 19, and 20. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 The Appellants identify the real party in interest as "MO VENT AS GEARS OY." (Appeal Br. 1.) Appeal 2018-005351 Application 14/717,677 STATEMENT OF THE CASE The Appellants' invention "relates to a gear unit" that can be "a gear unit of a wind power plant." (Spec. 1, 11. 4--5.) Independent Claims on Appeal (with indentations modified) 1. A gear unit comprising: a first shaft and a second shaft for connecting to an external mechanical system, at least one gear stage between the first and second shafts, a lubricant oil room for storing lubricant oil, an oil channel for transporting the lubricant oil from the lubricant oil room to the at least one gear stage, and an immersion heater for heating the lubricant oil flowing in the lubricant oil room towards an inlet of the oil channel, the immersion heater being located in the lubricant oil room, wherein the gear unit further comprises a mechanical flow guide located in the lubricant oil room and configured to modify flow of the lubricant oil flowing towards the inlet of the oil channel so as to increase flow velocity of the lubricant oil on a surface of the immersion heater. 15. A method for heating lubricant oil of a gear unit, the method comprising: heating, with an immersion heater located in a lubricant oil room, the lubricant oil flowing in the lubricant oil room towards an inlet of an oil channel transporting the lubricant oil from the lubricant oil room to parts of the gear unit to be lubricated, and modifying, with a mechanical flow guide located in the lubricant oil room and submerged in the lubricant oil, flow of the lubricant oil flowing towards the inlet of the oil channel so as to increase flow velocity of the lubricant oil on a surface of the immersion heater. 2 Appeal 2018-005351 Application 14/717,677 Dahl Franco Vuolle Takayanagi References2 us 3,856,078 US 6,615,438 Bl US 2011/0272214 Al US 2011/0286844 Al Rejections3 Dec. 24, 1974 Sept. 9, 2003 Nov. 10, 2011 Nov. 24, 2011 The Examiner rejects claims 1, 2, 7, 8, 14--16, and 19 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle and Dahl. (Final Action 3.) The Examiner rejects claims 9, 10, and 20 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle, Dahl, and Franco. (Final Action 9.) The Examiner rejects claim 13 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle, Dahl, Franco, and Takayanagi. (Final Action 10.) ANALYSIS The Examiner determines that the gear unit recited in independent claim 1, and the method recited in independent claim 15, would have been obvious over Vuolle and Dahl. (See Final Action 3-8.) The Appellants argue that "there is no proper rationale and/or reasonable expectation of success based on the combination of the cited references, by which one skilled in the art could arrive at the present invention as claimed." (Appeal Br. 6.) We are persuaded by the Appellants' position. Independent claim 1 requires "an immersion heater" that is "located in [a] lubricant oil room," and independent claim 15 similarly requires a 2 Our quotations to these references omit, where applicable, the bolding of drawing-associated numerals. 3 The Examiner's rejections under 35 U.S.C. Â§ 112 (see Final Action 2) have been withdrawn (see Advisory Action 3). 3 Appeal 2018-005351 Application 14/717,677 heating step to be performed "with an immersion heater located in a lubricant oil room." (Id.) The Examiner finds that Vuolle discloses a gear unit that includes "a lubricant oil room (124 )" and "an immersion heater (heater element shown in 124)" that is "located in the lubricant oil room." (Final Action 3--4.) Independent claim 1 also requires "a mechanical flow guide located in the lubricant oil room," and independent claim 15 similarly also requires a flow-modifying step to be performed "with a mechanical flow guide located in the lubricant oil room." (Appeal Br., Claims App.) The Examiner finds that Dahl teaches "an oil heating arrangement" comprising "a mechanical flow guide ( 49, 50, 51) located in the lubricant room." (Final Action 6.) The Examiner determines that it would have been obvious "to employ [a] mechanical flow guide, as taught by Dahl, to guide the oil flow path to ensure the oil contacts the heating elements." (Final Action 8.) The Examiner clarifies that, in the proposed combination of the prior art, "[t]he mechanical flow guides 49, 50, and 51 of Dahl are taught into [Vuolle's] lubricant oil room 124." (Answer 3.) In other words, in the Examiner's proposed combination of the prior art, Vuolle' s component 124 is modified to incorporate Dahl's teachings regarding a mechanical flow guide. Insofar as the Examiner is saying that Vuolle discloses a gear unit including a component 124 that heats lubricant oil, we agree. Indeed, Vuolle describes component 124 as "a pre-heater element 124 for warming the lubricant oil circulating via the gear stages and via the bearings of the electrical machine." (Vuolle ,r 35.) Vuolle additionally teaches that "[t]he pre-heater is used preferably in cold-start situations" because "it is advantageous to have an optimum temperature in the lubricant oil" from "the 4 Appeal 2018-005351 Application 14/717,677 beginning of a cold-start process." (Id. ,r 15.) But, as pointed out by the Appellants, Vuolle does not offer "any further disclosure relating to how the pre-heater operates." (Reply Br. 2.) As for Vuolle's drawings, they portray the preheater 124 schematically, as is shown in the relevant region of Figure 1 reproduced below. n 124 The above reproduction depicts Vuolle's preheater 124 as having a rectangular border and an icon (which appears to be symbolic of a heat exchanger) within this rectangular border. In short, Vuolle offers very little information, written or otherwise, about its preheater 124; and Vuolle discloses next to nothing about the heat- providing structure of its preheater 124. Yet the Examiner's determination of obviousness relies upon detailed findings relating to the heat-distribution caused by the heat-providing structure ofVuolle's preheater 124, the engagement (or not) of lubricant oil with this heat-providing structure, and/or the positioning of this heat- providing structure relative to the bottom of the preheater 124. (See Answer 4--5.) For example, the Examiner finds that the oil traveling through Vuolle's preheater 124 (i.e., right-to-left in the relevant region of Figure 1 reproduced above), "may not be evenly heated." (J d.) The Examiner also finds that, in Vuolle's preheater 124, "[s]ome amount of oil may flow directly straight across the room, thereby directly engaging with the heater, 5 Appeal 2018-005351 Application 14/717,677 while some other amount of oil would flow along the bottom surface of the room, thereby not being heated as much." (Id.) The Examiner further finds that "it is not inherent" that all of the lubricant oil traveling through Vuolle' s preheater 124 "would be heated to the same magnitude." (Id. at 5.) Inasmuch as these detailed findings about the heat-providing structure of Vuolle's preheater 124 might foster a proper rationale for the Examiner's proposed combination of the prior art, they are not supported sufficiently by the record. As discussed above, Vuolle does not disclose any such details about the heat-providing structure in its preheater 124. Thus, we do not sustain the Examiner's rejection of independent claims 1 and 15 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle and Dahl. The Examiner's further findings and determinations with respect to the dependent claims do not compensate for the shortcomings in the rejection of independent claims 1 and 15. (See Final Action 5-10.) In this regard, we note that the Examiner relies upon Franco only to teach "apertures" in a "tubular part" of a mechanical flow guide (id. at 9), and the Examiner relies upon Takayanagi only to teach a "lubricant oil room" that is an "oil sump" (id. at 10). Thus, we do not sustain the Examiner's rejection of dependent claims 2, 7, 8, 14, and 19 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle and Dahl; we do not sustain the Examiner's rejection of dependent 9, 10, and 20 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle, Dahl, and Franco; and we do not sustain the Examiner's rejection of dependent claim 13 under 35 U.S.C. Â§ 103 as unpatentable over Vuolle, Dahl, Franco, and Takayanagi. 6 Appeal 2018-005351 Application 14/717,677 DECISION We REVERSE the Examiner's rejections of claims 1, 2, 7-16, 19, and 20. REVERSED 7