POLYTECH A/S

Patent Trials and Appeals BoardAug 4, 2021

2021001227 (P.T.A.B. Aug. 4, 2021)

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. 15/525,244 05/08/2017 Mads KIRKEGAARD 7100-0101PUS1 3249 2292 7590 08/04/2021 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER LATHERS, KEVIN ANTHONY ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 08/04/2021 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 MADS KIRKEGAARD and RICHARD BAKER Appeal 2021-001227 Application 15/525,244 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 46–53, 57–80, and 84.2, 3 See Final 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “POLYTECH A/S.” Appeal Br. 1. 2 The Examiner mistakenly identifies the pending claims as being claims 46– 53 and 55–84 (not 57–84). See Final Act. 1. This is because claims 54–56 have been canceled. See Amendment dated November 7, 2019. 3 We note that the Examiner has not issued a rejection regarding dependent claims 81–83. Nor has the Examiner indicated that these claims would be allowable, if properly amended. Claim 81 has no “twin” in the above rejected claims, however claim 82 is the twin of claim 61 and further, claim Appeal 2021-001227 Application 15/525,244 2 Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a preformed protective cover for a wind turbine blade.” Spec. 1:5–6. Apparatus claim 46 and method claim 66 are independent. Claim 46 is illustrative of the claims on appeal and is reproduced below. 46. A preformed protective cover for a wind turbine blade, wherein the preformed protective cover is made of a polyurethane material prepared from a polyol, butanediol, and an isocyanate, wherein the preformed protective cover is adapted to be attached along at least a part of a longitudinal edge of the wind turbine blade by adhesion of an inside of the preformed protective cover to a surface of the longitudinal edge of the wind turbine blade, wherein the preformed protective cover is elongated in a longitudinal direction and has an U- formed cross-section, wherein the preformed protective cover includes a central cover section extending in the longitudinal direction and two peripheral cover sections extending in the longitudinal direction at either side of the central cover section, respectively, wherein the central cover section has a minimum thickness of at least 1 millimetre, and each peripheral cover section has a thickness decreasing from a maximum thickness of at least 1 millimetre to a minimum thickness of less than 1/2 millimetre. 83 is the twin of claim 59. As no rejection of claims 81–83 is on appeal before us (Appellant is equally silent in the matter), we take no position in the matter. Appeal 2021-001227 Application 15/525,244 3 EVIDENCE Name Reference Date Bonk et al. (“Bonk”) US 4,202,957 May 13, 1980 Hibbard US 2007/0036659 A1 Feb. 15, 2007 Wirt et al. (“Wirt”) US 2010/0135817 A1 June 3, 2010 Koonce et al. (“Koonce”) US 2010/0266799 A1 Oct. 21, 2010 Driver et al. (“Driver”) US 2013/0045105 A1 Feb. 21, 2013 REJECTIONS4 Claims 46–53, 57, 58, 60, 61, 63, and 64 are rejected under 35 U.S.C. § 103 as unpatentable over Driver and Bonk. Claims 59 and 62 are rejected under 35 U.S.C. § 103 as unpatentable over Driver, Bonk, and Koonce. Claims 65–67, 69–80, and 84 are rejected under 35 U.S.C. § 103 as unpatentable over Driver, Bonk, and Hibbard. Claim 68 is rejected under 35 U.S.C. § 103 as unpatentable over Driver, Bonk, Hibbard, and Wirt. Claim 79 is rejected under 35 U.S.C. § 103 as unpatentable over Driver, Bonk, Hibbard, and Koonce. 4 The rejection of claim 68 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement has been withdrawn. See Ans. 18. Additionally, the rejection of claims 46 and 68 under 35 U.S.C. § 112(b) as being indefinite has also been withdrawn. See Ans. 19. Appeal 2021-001227 Application 15/525,244 4 ANALYSIS The rejection of claims 46–53, 57, 58, 60, 61, 63, and 64 as unpatentable over Driver and Bonk Appellant argues all these claims together. See Appeal Br. 6–8. We select independent claim 46 for review, with the remaining claims standing or falling with claim 46. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). The Examiner primarily relies on Driver for teaching the limitations of claim 46, including the use of a polyurethane preform adhered to a wind turbine blade. See Final Act. 7. However, the Examiner acknowledges that “Driver does not teach a polyurethane material prepared from a polyol, butanediol, and an isocyanate” as recited. Final Act. 7. The Examiner relies on Bonk for such teaching and provides reasons for modifying “Driver’s polyurethane protective layer in view of Bonk’s polyurethane.” Final Act. 8; see also Ans. 21. Appellant acknowledges that Driver “is directed to a wind turbine blade” but states that Bonk “is directed to thermoplastic polyurethane elastomers.” Appeal Br. 6. As such, Appellant contends that Driver and Bonk are non-analogous art because “thermoplastic polyurethane elastomers . . . are not [in] the same field of endeavor as wind turbines.” Appeal Br. 6. Accordingly, as per Appellant, “one skilled in the art would have no rationale to look to Bonk to find a material for production of a protective cover.” Appeal Br. 7. As is well-known, the analogous art test can involve two different avenues of investigation. A reference is analogous art if it “is either in the field of the applicant’s endeavor or is reasonably pertinent to the [particular] problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Presuming Appellant’s assertion above that Bonk is Appeal 2021-001227 Application 15/525,244 5 not in “the same field of endeavor as wind turbines” is correct, we must then assess whether Bonk “is reasonably pertinent to the [particular] problem with which the inventor was concerned.” Kahn, 441 F.3d at 987. A review of Appellant’s Specification discloses a desire, by Appellant, “to improve the robustness of wind turbine blades . . . in order to avoid damage” while also keeping costs down. Spec. 2:16–19. More specifically, Appellant’s Specification teaches a desire to improve “the robustness of the leading edge to erosion” as well avoiding/minimizing damage due to lightning strikes or de-icing operations. Spec. 2:21–26. On the topic of robustness, Bonk teaches a polyurethane elastomer whose hardness “lies within the range of about 60 Shore A to about 80 Shore D.” Bonk 4:63–65. Table 1 of Bonk discloses upper Shore hardness values of “44D” and “92A.” It is not made clear how the disclosure of such hardness values fail to relate to Appellant’s “robustness” concerns, such as by providing a hardened surface to reduce erosion or the effects of de-icing. On the topic of lightning strikes, Bonk teaches that “the elastomers of the invention can have incorporated in them . . . additives such as . . . fire retardants.” Bonk 6:32–37. Appellant does not make clear how reducing the possibility of fire would not be beneficial during a lightning strike. On the topic of cost, Bonk teaches that its polyurethane composition is “significantly less expensive than polyester polyols and thereby would provide obvious economic advantages.” Bonk 1:27–30. Appellant does not explain how this would not be the case. Our reviewing court has provided instruction that “preponderance of the evidence is the standard that must be met by the PTO in making rejections.” In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). In view of Appeal 2021-001227 Application 15/525,244 6 the above, it is not made clear how Bonk fails to be analogous art under the “preponderance of the evidence” test. Caveney, 761 F.2d at 674. Said another way, it is not made clear how Bonk could be said to not be pertinent to the problems facing Appellant. See also Ans. 20 (addressing MPEP § 2141.01(a) (9th ed. Rev. 10.2019, rev. June 2020), “Analogous and Nonanalogous Art”). We have also been instructed that “[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Furthermore, in the matter before us, we understand that one of Bonk’s methods of manufacture is directed to injection molding of polyurethane compounds, which generally are not subject to such a process because of the heat involved. See Bonk 1:43–56; Ans. 22 (“[t]he material of Bonk is not only produced by injection molding”). Regarding injection molding, Appellant contends that “[n]owhere in Driver, nor the present application, is there any concern or discussion about issues regarding injection molding using a polyurethane material.” Appeal Br. 7. However, this contention by Appellant misses the point. The question is not whether Driver, or the present application, raised such an issue in the first place; instead, the question is whether Bonk’s teachings would, as expressed above, “have commended itself to an inventor’s attention” when considering the problems faced. Clay, 966 F.2d at 659. Based on the above, we are of the opinion that Bonk would have been a resource subject to such an investigation by a skilled person. Thus, we disagree with Appellant that “one skilled in the art would have no rationale Appeal 2021-001227 Application 15/525,244 7 to look to Bonk to find a material for production of a protective cover for a wind turbine blade with increased wind erosion resistance.” Appeal Br. 7. Additionally, and in view of Driver’s teaching that polyurethane is a suitable material for use in wind turbine blades (see Driver ¶ 28), we agree with the Examiner’s assessment that a skilled person would “be motivated to pursue material selections within the broad class of polyurethane materials.” Ans. 21; see also id. at 22. Consequently, and in view of the above, we are not persuaded by Appellant’s contentions that Bonk is non-analogous art. Accordingly, we do not fault the Examiner for combining Driver and Bonk in reaching this rejection because we find the two references to pertain to the field of invention and the problems encountered. Appellant also addresses the Examiner’s motivation to combine Driver and Bonk stating that a skilled person “would have no motivation or rationale to depart from Driver’s teaching and look to another non-analogous art such as Bonk to solve the problem of leading edge wear or erosion in wind turbines.” Appeal Br. 8. We disagree because the factors that rendered Bonk analogous art above (i.e., cost savings, robustness) are the same factors the Examiner expressed for combining Driver and Bonk. See Final Act. 7; Ans. 21. Appellant is not persuasive that these reasons to combine are in error. In summation, we sustain the Examiner’s rejection of claims 46–53, 57, 58, 60, 61, 63, and 64 as unpatentable over Driver and Bonk. The rejection of claims 59 and 62 as unpatentable over Driver, Bonk, and Koonce Appellant argues these two claims together. See Appeal Br. 8–9. We select claim 59 for review, with claim 62 standing or falling with claim 59. Appeal 2021-001227 Application 15/525,244 8 Claim 59 additionally recites “wherein the polyurethane comprises an UV stabilisator and/or colour pigment(s).” The Examiner relies on the additional reference to Koonce for such teachings (although Bonk teaches that the elastomers can also include “coloring agents” (Bonk 6:32–37)). Final Act. 10 (referencing Koonce ¶ 68). Indeed, paragraph 68 of Koonce states that “[e]lastomeric polyurethanes of the invention optionally include . . . UV stabilizers . . . colorants” and the like. Appellant does not dispute such teachings, but instead contends that “the Examiner erred in concluding that Koonce is analogous art.” Appeal Br. 8. This is because “Koonce is not pertinent to the problem of improving wind erosion resistance of wind turbine blade edges.” Appeal Br. 8. Koonce was not relied on for this purpose (i.e., improving wind erosion resistance), but instead for teaching the additional limitation of a polyurethane that “comprises an UV stabilisator and/or colour pigment(s).” Final Act. 10. Appellant does not explain how Koonce’s teaching of applying stabilizers and pigments to a polyurethane compound (such as Bonk’s) renders Koonce non-analogous art. We are not persuaded by Appellant’s contention. We sustain the Examiner’s rejection of claims 59 and 62 as being unpatentable over Driver, Bonk, and Koonce. The rejections of: (a) claims 65–67, 69–80, and 84 as unpatentable over Driver, Bonk, and Hibbard; (b) claim 68 as unpatentable over Driver, Bonk, Hibbard, and Wirt; and, (c) claim 79 as unpatentable over Driver, Bonk, Hibbard, and Koonce Appellant does not separately argue these rejections. See Appeal Br. 9–10. Instead, Appellant repeats the above arguments that “Bonk is not analogous art” and “the Examiner erred in concluding that Koonce is Appeal 2021-001227 Application 15/525,244 9 analogous art.” Appeal Br. 9. These assertions are not persuasive of Examiner error. Accordingly, we sustain the rejections of claims 65–80, and 84 as unpatentable of Driver, Bonk, and Hibbard alone, or combined with either of Wirt or Koonce. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 46–53, 57, 58, 60, 61, 63, 64 103 Driver, Bonk 46–53, 57, 58, 60, 61, 63, 64 59, 62 103 Driver, Bonk, Koonce 59, 62 65–67, 69– 80, 84 103 Driver, Bonk, Hibbard 65–67, 69– 80, 84 68 103 Driver, Bonk, Hibbard, Wirt 68 79 103 Driver, Bonk, Hibbard, Koonce 79 Overall Outcome 46–53, 57– 80, 84 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