Vestas Wind Systems A/S

Patent Trials and Appeals Board

Mar 15, 2022

2021005080 (P.T.A.B. Mar. 15, 2022)

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. 16/334,629 03/19/2019 Peter Sigfred Mortensen VWS-972US 1433 83583 7590 03/15/2022 Wood, Herron & Evans, LLP (Vestas Wind Systems) 441 Vine Street 2700 Carew Tower Cincinnati, OH 45202 EXAMINER KENNY, DANIEL J ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): mhines@whe-law.com usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER SIGFRED MORTENSEN, JES GRØN ANDERSEN, and MIROSLAVA VASTLOVÁ ____________________ Appeal 2021-005080 Application 16/334,629 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and SEAN P. O’HANLON, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-6, 8-10, and 16-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2022). Appellant identifies the real party in interest as Vestas Wind Systems A/S. Appeal Br. 1. Appeal 2021-005080 Application 16/334,629 2 THE CLAIMED SUBJECT MATTER The Application is titled, “TOWER VIBRATION DAMPER,” and relates to the vibration dampers used in wind turbine towers. Spec. 1. Claims 1 and 11 are independent. We reproduce claim 1 below. 1. A tower damper adapted to be mounted in a wind turbine tower, the tower damper comprising: a pendulum structure adapted to be suspended in the wind turbine tower, said pendulum structure comprising a cylindrically shaped pendulum body, a plurality of springs arranged to dampen movements of the pendulum structure when suspended in the wind turbine tower, a suspension arrangement for suspending the pendulum structure in the wind turbine tower such that the pendulum structure is allowed to displace from a neutral position for the pendulum structure, and a chamber holding a damping liquid into which damping liquid the pendulum structure is at least partly immersed. EVIDENCE The prior art relied upon by the Examiner is: 2 Although the first named inventor on this German patent application is Wolf Juergen Gerasch, the Examiner and Appellant refer to this reference as “Spannverbund,” which is the applicant. See, e.g., Non-Final Act. 3; Appeal Br. 1. Thus, we do likewise herein for convenience. Name Reference Date Kobori US 4,922,667 May 8, 1990 Kammel US 6,007,061 Dec. 28, 1999 Marmo US 8,418,413 B2 Apr. 16, 2013 Øllgaard US 8,776,967 B2 July 15, 2014 Uchida JP 08270724 A Oct. 15, 1996 Spannverbund2 DE 10302687 A1 July 29, 2004 Appeal 2021-005080 Application 16/334,629 3 REJECTIONS I. Claims 1-3, 5, 6, 8, and 19-21 stand rejected under 35 U.S.C. § 103 as unpatentable over Marmo and Spannverbund. II. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over Marmo, Spannverbund, and Uchida. III. Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as unpatentable over Marmo, Spannverbund, and Kobori. IV. Claims 16-18 stand rejected under 35 U.S.C. § 103 as unpatentable over Marmo, Spannverbund, and Øllgaard. V. Claim 22 stands rejected under 35 U.S.C. § 103 as unpatentable over Marmo, Spannverbund, and Kammel. OPINION Rejection I - Obviousness Based on Marmo and Spannverbund Claims 1, 2, 5, 8, and 19-21 Appellant presents arguments for independent claim 1 (Appeal Br. 6-19) and relies on the same arguments for dependent claims 2, 5, 8, and 19-21 (id. at 19). We select claim 1 as representative, and claims 2, 5, 8, and 19-21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2022). Appellant separately argues dependent claims 3 and 6 (Appeal Br. 19-30), which we address below. The Examiner finds that Marmo discloses a tower damper substantially as recited in claim 1, but does not disclose “a chamber holding a damping liquid into which . . . the pendulum structure is at least partly immersed.” Final Act. 3 (citing Marmo, 3:11-15; Figs. 3-5). The Examiner finds that Spannverbund discloses a chamber (cylindrical container 2) holding a damping liquid (6) into which the pendulum structure is at least Appeal 2021-005080 Application 16/334,629 4 partly immersed. Id. The Examiner determines that it would have been obvious “to put the Marmo cylindrical damper/springs in damping fluid ‘for damping the vibrations of’ the tower.” Id. (citing Spannverbund ¶ 1). Appellant argues that the “proposed modification would render a key feature of the Marmo mass assembly (40) - the aperture (54) and the ability for a person to pass by the mass assembly (40) to access the upper reaches of the tower - inoperative for its intended purpose.” Appeal Br. 9-10. Appellant asserts that Marmo’s mass assembly 40, including the aperture 54, would be submerged (partially or fully) in Spannverbund’s fluid-filled container 2, and closed bottom 5 of container 2 would be a physical barrier preventing any person from Marmo’s accessing aperture 54 to pass by the mass assembly 40. Id. For the reasons that follow, we are not persuaded by this argument. The Examiner responds that a person of ordinary skill in the art would have been able to combine the teachings of Marmo and Spannverbund in a way that maintains access to aperture 54. Ans. 4. The Examiner explains that “access could be provided by a corresponding notch like that of aperture (54) in the damping liquid chamber (the worker then could pass through such notch).” Id. In this regard, Appellant does not persuasively refute the Examiner’s position. Appellant does not proffer factual evidence or persuasive rationale to explain how combining the teachings of Marmo and Spannverbund in an operable manner that retains access like aperture 54 would have been beyond the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appeal 2021-005080 Application 16/334,629 5 Appellant contends that combining the teachings of Spannverbund and Marmo so as to preserve access through aperture 54, as proposed by the Examiner, would not have been obvious because it would require substantial redesign of Spannverbund’s container and would change the basic principles under which the container was designed to operate. Reply Br. 6 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)). Appellant asserts that Spannverbund uses a rotationally-symmetrical hollow cylinder to dampen horizontal vibration in all directions of a plane the same way. See id. (citing Spannverbund ¶ 21). According to Appellant, the proposed combination would “render[] the Spannverbund container non-rotationally symmetric, thereby changing the basic principles under which the container was designed to operate,” and “[t]he end result is that the mass assembly of Marmo is prevented from damping tower vibrations in all directions the same way.” Id. at 6-7; see also id. at 7 (asserting that “the ‘notch’ in the container would interfere with and limit movement of the mass assembly in certain directions compared to others”). For the reasons that follow, this argument is unpersuasive. The “principle of operation” referred to by Appellant relates to the “basic principles” under which the prior art device was designed to operate. Ratti, 270 F.2d at 813 (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference’s] construction was designed to operate.” (emphasis added)). Under Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Appeal 2021-005080 Application 16/334,629 6 Marmo discloses using a mass assembly suspended from a tower to attenuate vibrations. Marmo 1:67-2:7. Spannverbund discloses using a heavy pendulum to dampen horizontal vibrations in a building. Spannverbund ¶ 13. Spannverbund also discloses at least partially submerging the pendulum in a container of damping fluid, which opposes bending vibration of the pendulum to provide further damping. Id. ¶¶ 16-17; see also id. ¶ 16 (disclosing that “the natural frequency of the pendulum and the degree of damping can be adjusted by the choice of the fluid and / or by adjusting the immersion depth of the pendulum in the fluid”). Spannverbund discloses a preferred embodiment in which the container is a hollow cylinder, and “[d]ue to the rotationally symmetrical properties of the hollow cylinder, the damping device is therefore capable of damping horizontal vibrations in all directions of a plane in the same way.” Id. ¶ 21. Here, even if the proposed combination of teachings would require a non-rotationally symmetric container (see Reply Br. 6-7), Appellant does not provide a cogent explanation how or why this would change the basic principles (i.e., scientific or technical principles) under which the container is designed to operate, or otherwise render it unsatisfactory for its intended purpose of holding damping fluid into which a mass is submerged. Moreover, even if the proposed modification would limit movement of Marmo’s mass assembly or prevent the device from damping vibrations in all directions the same way, as Appellant asserts (see Reply Br. 7), our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that, if there Appeal 2021-005080 Application 16/334,629 7 are tradeoffs involved regarding features, such things do not necessarily prevent the proposed combination); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Here, the Examiner reasons that combining Marmo’s mass assembly with a container of damping fluid, as taught by Spannverbund, would provide additional vibration damping to Marmo’s system. Ans. 7; see also id. at 6 (noting that “Spannverbund itself teaches the advantage of using both a damping mass 4 and damping fluid 8”). Appellant’s argument does not identify error in this reasoning. Appellant argues that the “closed bottom (5) of the container (2) of Spannverbund would block access to the bottom of the mass assembly (40) of Marmo thereby preventing the use of the additional mass assembly (64) . . . to change attenuation of the mass damper to target certain frequencies of tower vibrations.” Appeal Br. 15. Appellant asserts that the proposed “combination would destroy this important principle of operation of Marmo and make the invention unsatisfactory for its intended purpose.” Id. For the reasons that follow, we are not persuaded by this argument. Marmo discloses that “mass assembly 40 can comprise at least one further assembly 64 comprising mass members 42 and retaining members 44, 46, with the assemblies connected end to end,” such that the “weight of the mass assembly 40 can be changed.” Marmo 8:28-32; see also id. at 10:11-12 (disclosing that “[a]ttenuation increases with the weight of the mass assembly 40”). The Examiner takes the position that Marmo’s further Appeal 2021-005080 Application 16/334,629 8 assembly 64 is an optional feature that would be provided during tower construction, and “the appropriate mass would be calculated and selected for the given tower height, wind speed, etc.” Ans. 6 (citing Marmo 8:28-34). Appellant does not identify error in the Examiner’s position. Moreover, even if combining Spannverbund’s damping fluid container with Marmo’s mass assembly 40 could prevent attaching or removing further assembly 64 (see Appeal Br. 15), we note again that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, 437 F.3d at 1165; Winner, 202 F.3d at 1349 n.8. Here, the Examiner posits that “additional vibration attenuation offered by the damping fluid could negate the necessity for such additional mass 64” (Ans. 7), which Appellant does not persuasively refute. We are also unpersuaded by Appellant’s contention that Marmo teaches away from the combination proposed by the Examiner. Appeal Br. 15. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not point to any disclosure in Marmo criticizing, discrediting, or otherwise discouraging the combination of Appeal 2021-005080 Application 16/334,629 9 teachings proposed by the Examiner in the rejection. That Marmo discloses using further assembly 64 to change the weight of mass assembly 40 to attenuate vibrations (Marmo 8:28-32, 10:11-12) does not constitute a teaching away from the Examiner’s proposal to use Spannverbund’s container of damping fluid to provide additional damping in Marmo’s tower damping arrangement. Appellant argues that the Examiner has not provided adequate reasoning for the proposed combination of reference teachings, and there is no motivation to modify Marmo as proposed. Appeal Br. 16. Appellant asserts that the Examiner’s reasoning is inadequate because “the mass assembly (40) of Marmo is already configured to damp[] the vibrations of the tower via the weight of the mass assembly (40).” Id. at 17 (citing Final Act. 3). According to Appellant, “the Examiner fails to identify any portion of the prior art that teaches or suggests a motivation to combine the references in the manner suggested by the Examiner.” Reply Br. 1-2. For the reasons that follow, this line of argument is unpersuasive. Appellant appears to insist on an explicit teaching, suggestion, or motivation in the cited references to establish obviousness, but such a requirement has been foreclosed by the Supreme Court. KSR, 550 U.S. at 419 (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with the Court’s precedent concerning obviousness). The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Instead, the relevant inquiry is whether the Examiner has set forth “some articulated Appeal 2021-005080 Application 16/334,629 10 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, 550 U.S. at 418. Here, as discussed above, the Examiner reasons that one of ordinary skill in the art would have modified Marmo’s tower damping arrangement to include suspending mass assembly 40 in a container of damping fluid, as taught by Spannverbund, in order to provide additional vibration damping. Ans. 6-7. Appellant does not identify a deficiency in the Examiner’s articulated reasoning. For the above reasons, Appellant does not apprise us of error in the Examiner’s conclusion that the subject matter of claim 1 would have been obvious. Accordingly, we sustain the rejection of claim 1, and of claims 2, 5, 8, and 19-21 falling therewith, under 35 U.S.C. § 103 as unpatentable over Marmo and Spannverbund. Claims 3 and 6 In rejecting claim 3, which depends from claim 1, the Examiner finds that Spannverbund further discloses that “the chamber comprises an outer boundary (the outer wall of the cylindrical container) and a bottom part (5),” but “Marmo in view of Spannverbund does not disclose an inner boundary, the bottom part extending between the outer boundary and the inner boundary.” Final Act. 4. The Examiner determines that it would have been obvious to modify Spannverbund’s cylindrical container “to have an inner boundary so that cables, workers, etc. could pass through the center of the Marmo pendulum structure.” Id.; see also id. (explaining that “the tower damper of the combination [would have] the outer boundary, inner boundary, and bottom part of the chamber form an annular trough”). Appeal 2021-005080 Application 16/334,629 11 Appellant argues that the Examiner’s conclusion of obviousness is unsupported and based on impermissible hindsight. Appeal Br. 21-23. In particular, Appellant asserts that “neither Marmo nor Spannverbund teach[es] a container holding a damping fluid having an inner boundary with the bottom part extending between the outer boundary and the inner boundary.” Id. at 21; see also id. at 22 (asserting that “the Examiner cited to no portion of either Marmo or Spannverbund to support the obviousness assertion”). According to Appellant, “this concept is only taught in Appellant’s disclosure.” Id. at 22. For the reasons that follow, we agree with Appellant that a sustainable case of obviousness has not been established. Here, the Examiner does not rely on either Marmo or Spannverbund as teaching a damping fluid container having an inner boundary as recited in claim 3, but, rather, finds that the inner boundary limitation is missing from the cited references. Final Act. 4. Nevertheless, the Examiner concludes that the limitation would have been obvious to one of ordinary skill in the art. Id. In essence, the Examiner appears to rely on common knowledge or common sense to support the conclusion that the missing limitation would have been obvious to one of ordinary skill in the art. It is true that common sense and common knowledge have their proper place in the obviousness inquiry. For example, our reviewing court stated in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) that “[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” Perfect Web, 587 F.3d at 1329. Moreover, “[i]n KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of Appeal 2021-005080 Application 16/334,629 12 individual prior-art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR, 550 U.S. at 415-22); see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006). Therefore, the Examiner may consider common sense, common wisdom, and common knowledge in analyzing obviousness. Common sense, however, is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (citing Dystar, 464 F.3d at 1360). Invoking common sense to supply a limitation missing from the prior art is generally reserved to situations when the limitation in question is unusually simple and the technology particularly straightforward. Perfect Web, 587 F.3d at 1326. Our reviewing court’s cases repeatedly warn that references to “common sense”-ether to supply a motivation to combine or a missing limitation-cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified. See Arendi, 832 F.3d at 1361. For example, in Hear-Wear, a case that also involved a missing limitation, our reviewing court stated that the Board was correct to require record evidence to support an assertion that the structural features of claims 3 and 9 of the ’512 patent were known prior art elements. The patentability of claims 3 and 9 with the limitation ‘a plurality of prongs that provide a detachable mechanical and electrical connection’ presents more than a peripheral issue. Appeal 2021-005080 Application 16/334,629 13 K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014) (emphasis added) (citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). Regarding the instant rejection of claim 3, the Examiner errs by failing to provide substantial evidence to support the conclusion of obviousness. In particular, the Examiner does not point to, nor do we discern, any evidence of record that the damping chamber recited in claim 3 is unusually simple or that the technology is particularly straightforward. See Perfect Web, 587 F.3d at 1326. We note that the “use of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” Perfect Web, 587 F.3d at 1329 (quoting DyStar, 464 F.3d at 1366). However, the Examiner does not cogently explain how passing cables and workers through the center of Marmo’s mass assembly 42 would have led one of ordinary skill in the art to further modify the damping fluid container in the combination of Marmo and Spannverbund to have an inner boundary. Indeed, Marmo discloses that mass assembly 40 already includes “aperture 54 of sufficient size and dimensions to allow a person to pass.” Marmo 8:2-3. As discussed above with respect to the rejection of claim 1, the Examiner proposes modifying Spannverbund’s damping fluid container to have a notch that corresponds to Marmo’s aperture 54 so as to preserve worker access. See Ans. 4. Given that the Examiner’s proposed combination of Marmo and Spannverbund already provides room for a person to pass via aperture 54, it is unclear why one of ordinary skill in the art would have been prompted to further modify the damping fluid container to have an inner boundary, as proposed in the Appeal 2021-005080 Application 16/334,629 14 rejection of claim 3. Moreover, the Examiner does not point to, nor do we discern, any evidence in the cited references concerning a need for cables to pass through the middle of the mass assembly. Absent improper hindsight reconstruction, we fail to see a sufficient reason based on some rational underpinning that one of ordinary skill in the art would have modified the combination of Marmo and Spannverbund as proposed by the Examiner. Accordingly, we do not sustain the rejection of claim 3 and its dependent claim 6 as being unpatentable over Marmo and Spannverbund. Rejection II - Obviousness Based on Marmo, Spannverbund, and Uchida The rejection of claim 4 is deficient for the same reasons discussed above in connection with the rejection of claim 3, from which claim 4 depends. The Examiner relies on Uchida for teaching additional features, but does not articulate any findings or reasoning that would cure the aforementioned deficiency in the combination of Marmo and Spannverbund. See Final Act. 5. Accordingly, we do not sustain the rejection of claim 4 under 35 U.S.C. § 103 as unpatentable over Marmo, Spannverbund, and Uchida. Rejections III-V - Obviousness Based on Marmo, Spannverbund, and one of Kobori, Øllgaard, and Kammel In contesting these rejections, Appellant relies on the same arguments we found unpersuasive in connection with claim 1, from which claims 9, 10, 16-18, and 22 depend. See Appeal Br. 19, 31-32 (relying on the alleged deficiencies in the combination of Marmo and Spannverbund, and asserting that each of Kobori, Øllgaard, and Kammel fails to remedy such deficiencies). Accordingly, for the same reasons discussed above with Appeal 2021-005080 Application 16/334,629 15 respect to the rejection of claim 1, we also sustain the rejections of claims 9, 10, 16-18, and 22 under 35 U.S.C. § 103. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5, 6, 8, 19-21 103 Marmo, Spannverbund 1, 2, 5, 8, 19-21 3, 6 4 103 Marmo, Spannverbund, Uchida 4 9, 10 103 Marmo, Spannverbund, Kobori 9, 10 16-18 103 Marmo, Spannverbund, Øllgaard 16-18 22 103 Marmo, Spannverbund, Kammel 22 Overall Outcome 1, 2, 5, 8- 10, 16-22 3, 4, 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2022). See 37 C.F.R. § 1.136(a)(1)(iv) (2022). AFFIRMED IN PART