Ex Parte Nielsen et al

Patent Trial and Appeal Board

Mar 14, 2018

13994640 (P.T.A.B. Mar. 14, 2018)

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.
13/994,640 09/03/2013 Thomas Korsgaard Nielsen VWS-597US 4063
83583 7590 03/16/2018
Wood, Herron & Evans, LLP (Vestas Wind Systems)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
EXAMINER
STANEK, KELSEY L
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS KORSGAARD NIELSEN, SIMON SCHJ0TT, and
JENS DEMTRODER
Appeal 2017-006914
Application 13/994,640
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Korsgaard et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Action (dated Apr. 28,
2016, hereinafter “Final Act.”) rejecting claims 1, 3, and 5-14.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 Vestas Winds Systems A/S is identified as the real party in interest in
Appellants’ Appeal Brief (filed Nov. 2, 2016, hereinafter “Appeal Br.”), at
page 3.
2 Claims 2 and 4 are canceled. Appeal Br. 14.
Appeal 2017-006914
Application 13/994,640
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “a rotating system, such as a gear system or
a bearing support system for a wind turbine.” Spec. 1,11. 3—4.
Claims 1, 12, and 13 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A rotating system for a wind turbine, the rotating system
comprising:
a housing defining an interior part and an exterior part
and including an upper region and a lower region,
a lubricant drain extending from the interior part of the
housing towards the exterior part of the housing and arranged in
the lower region of the housing, and
a rotating part accommodated in the interior part of the
housing in a manner which allows rotational movements of the
rotating part relative to the housing, and in such a manner that
lubricant can be contained between the housing and the rotating
part,
wherein the rotating part is arranged in the interior part of
the housing in such a manner that the rotating part is arranged
closer to a wall of the housing in the upper region of the
housing than in the lower region of the housing so as to provide
a pumping action forcing lubricant arranged in the interior part
of the housing towards the lubricant drain during rotational
movements of the rotating part relative to the housing.
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Appeal 2017-006914
Application 13/994,640
REJECTIONS
I. The Examiner rejected claims 1, 3, 5-7, 9, 11, 13, and 14 under
35 U.S.C. § 102(b) as being anticipated by Haase (US 5,494,355, iss.
Feb. 27, 1996).
II. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Haase.
III. The Examiner rejected claims 8 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Haase and Karstens (DE 10 2007 029 469
Al, pub. Jan. 2, 2009).
ANALYSIS
Rejection I
The Examiner finds that Haase discloses, inter alia, a rotating system
including housing 5 having a wall 9 and accommodating rotating part 2,
funnel 8, and drain conduit 7. Final Act. 3 (citing Haase, col. 2,1. 61-col. 3,
1. 16, col. 5,11. 11-29, and Fig. 1). The Examiner further finds “that the
rotating part (2) is arranged closer to a wall of the housing (5) in an upper
region . . . than in a lower region of the housing (5).” Id. (citing Haase, Fig.
2). According to the Examiner,
[B]y examining Figures 1 and 2 of Haase, one can determine
that the funnel (8) would be visible once it exits from the lower
region of the wall (9) of the housing (5), thereby permitting one
to determine that the shaft is arranged in the interior of the
housing such that the shaft is arranged closer to a wall of the
ho[us]ing in an upper region of the housing than in a lower
region of the housing.
Advisory Action 2 (dated July 13, 2016, hereinafter “Adv. Act.”).
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Appeal 2017-006914
Application 13/994,640
Appellants argue that both Figures 1 and 2 of “Haase clearly show[]
that the collector chamber (5) is circular and that the shaft (2) is arranged
centrically (i.e., coaxially) within chamber 5.” Appeal Br. 8 (citing Haase,
Figs. 1, 2). Appellants contend that because “the outer boundaries of the
collector chamber (5), as well as the point of transition between the funnel
(8) and the chamber (5), cannot be precisely determined based on FIG. 2
alone,” the Examiner’s position is based on “mere conjecture.” Id. at 8-9.
Moreover, Appellants note that because Haase states “the funnel [8] is
highly diagrammatically illustrated in FIG. 2,” a person of ordinary skill in
the art cannot rely solely on Haase’s Figure 2 to show that Haase’s shaft 2 is
eccentrically positioned within housing 5. Id. at 11.
In response, the Examiner provides annotated Figures 1 and 3 of
Haase, shown below, as evidence that Haase discloses an eccentrically
positioned shaft 2 within collector chamber 5 (housing):
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Appeal 2017-006914
Application 13/994,640
The Examiner’s annotated Figure 1 of Haase shows distances D and E
between shaft 2 and upper and lower portions of collector chamber 5,
respectively. Examiner’s Answer 8 (dated Feb. 7, 2017, hereinafter “Ans.”).
The Examiner’s annotated Figure 3 of Haase shows distances A and B
between shaft 2 and wall 9 of upper and lower portions of collector chamber
5, respectively. Id. at 3.
It is well settled that an anticipation rejection cannot be predicated on
an ambiguous reference. Rather, disclosures in a reference relied on to
prove anticipation must be so clear and explicit that those skilled in the art
will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d
893, 899, (CCPA 1962). We appreciate that a drawing teaches all that it
reasonably discloses and suggests to a person of ordinary skill in the art. In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979). However, in this case, based
on Figures 1-3 of Haase, we agree with Appellants that the Examiner’s
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Application 13/994,640
position that Haase’s shaft 2 is eccentrically positioned within housing 5 is
based on conjecture. See Appeal Br. 6, 8, and 9; Reply Br. 2, 4, and 6.
First, with respect to the Examiner’s annotated Figures 1 and 3 of
Haase, we agree with Appellants that “the Examiner has improperly
interpreted the wall [(9)] of the collector chamber (5) as including a wall
of the funnel (8), despite the collector chamber (5) and funnel (8) being
separate and distinct elements.” Reply Br. 4. Appellants are correct that a
proper interpretation of Haase’s Figures 1 and 3 would be to draw lines A'
and B' between shaft 2 and wall 9 of upper and lower portions of collector
chamber 5, respectively, without including the wall of funnel 8, as shown
below in Appellants’ annotated Figure 3 of Haase:
tfisfance A'
Appellants’ annotated Figure 3 of Haase shows distances A' and B' between
shaft 2 and upper and lower portions of collector chamber 5, respectively.
Id. at 3.
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Application 13/994,640
Upon viewing Appellants’ annotated Figure 3 of Haase, although we
do not agree with Appellants that distances A' and B' are necessarily equal
(see id.), nonetheless, we do not find that distance A' is necessarily shorter
than distance B', as required by each of independent claims 1 and 13. In
other words, a person having ordinary skill in the art will have difficulty in
ascertaining whether distance A' is shorter than distance B'. Similarly, the
skilled artisan would likewise be at a loss in ascertaining from Haase’s
Figure 1 whether the distance between shaft 2 and an upper portion of wall 9
of collector chamber 5 is shorter than the distance between shaft 2 and a
lower portion of wall 9 of collector chamber 5.
Secondly, we agree with Appellants that because in Haase’s Figure 2
wall 9 of collector chamber 5 (housing) is not shown and funnel 8 and
collector chamber 5 (housing) appear contiguous, “no indication of the
positioning of the shaft (2) relative to the center of the chamber (5) can be
ascertained.” Reply Br. 7. Moreover, regardless of whether Haase’s
Figure 2 is a longitudinal cross section along line 23 of Figure 1 (see Adv.
Act. 2) or along Appellants’ line 2-2 in Figure 1 (see Appeal Br. 10) or a
combination of both (see Reply Br. 7), the skilled artisan cannot ascertain
with certainty the position of shaft 2 with respect to wall 9 of collector
chamber 5.
Thirdly, Appellants are correct that in Haase’s Figure 2 “a thickened
vertical line extending partially along” the vertical line forming the
boundary between collector chamber 5 and slide bearing 3 “may represent a
wall of the funnel (8), and thus the upper terminus of this thickened line may
be indicative of the boundary of the collector chamber (5).” Id. at 8
(emphasis added). Furthermore, as Haase discloses that collector chamber 5
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Application 13/994,640
is located between seal 4 and slide bearing 3, the lower terminus of seal 4
may likewise be indicative of the boundary of the collector chamber 5. See
Haase, col. 6,11. 1-2, Fig. 2. Haase’s annotated Figure 2 is shown below:
Annotated Figure 2 of Haase shows the upper terminus of funnel 8 and the
lower terminus of seal 4.
As such, in light of Haase’s disclosure and upon viewing annotated
Figure 2 of Haase shown above, a person of ordinary skill in the art would
ascertain two interpretations for determining the boundary of collector
chamber 5. Therefore, as the boundary of collector chamber 5 cannot be
ascertained with certainty, the same skilled artisan would have difficulty
ascertaining the distance between shaft 2 and wall 9 of collector chamber 5,
and, thus, we agree with Appellants that the Examiner’s position is based on
conjecture. See Appeal Br. 8-9.
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Finally, we are not persuaded by the Examiner’s position that because
Haase discloses that wall 9 of housing 5 “has an essentially circular cross
section” this means that “housing [5] is not limited to an exactly circular
cross section, and the distance from the housing to the rotating part [i.e. shaft
2] varies.” Ans. 8-9 (citing Haase, col. 6,11. 35-38). Even assuming
arguendo that such variations in the circular cross section of Haase’s
collector chamber 5 are present, the Examiner fails to adequately explain
how such variations necessarily results in the claimed relationship of
distances between shaft 2 and upper and lower portions of collector
chamber 5.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claims 1, 3, 5-7, 9, 11, 13, and 14, as
anticipated by Haase.
Rejections II and III
The Examiner’s modification of Haase and use of the Karstens
disclosure does not remedy the deficiency of Haase discussed supra. See
Final Act. 5-7.
Therefore, for the same reasons as discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claim 12 as unpatentable
over Haase and of claims 8 and 10 as unpatentable over Haase and Karstens.
SUMMARY
The Examiner’s decision to reject claims 1, 3, and 5-14 is reversed.
REVERSED
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