DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/EP2023/061345, filed 04/28/2023 and published as WO 2023/222365 A1 on 11/23/2023. The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims foreign priority to EP 22174516.9, filed 05/20/2022 and published as EP 4 279 734 A1 on 11/22/2023. After reviewing the priority document, it is the Primary Examiner’s position that all of the instantly claimed subject matter is fully supported by the priority document. Consequently, all of the pending claims have an effective filing date of 11/22/2023.
Election/Restrictions
Applicant's election with traverse of claims 1-10 in the reply filed on 03/04/2026 is acknowledged. The traversal is on the ground(s) that:
(i) Unity of invention exists between method claims 1-10 and apparatus claims 11-14 because they are, respectively, “a process and an apparatus or means specifically designed for carrying out the process.” 37 C.F.R. § 1.475(b)(4).
(ii) The computer program product of claim 15 embodies the concept of automated control of a deposition system to form a leading edge protector on a wind turbine blade and, consequently, shares the same or corresponding technical feature(s) as the method and apparatus claims.
(iii) The special technical feature is the “coordinated system involving a deposition method, apparatus, and control software for forming a leading edge protector on a wind turbine blade using controlled robotic deposition. These claims collectively define a single technological concept directed to automated formation of protective structures on turbine blades” (emphasis added).
(iv) There is no serious burden on the Primary Examiner to examine all of the claimed inventions.
This is not found persuasive because:
(i)-(ii) It is the Primary Examiner’s position that unity is lacking a posteriori. That is, the presumptive a priori unity under 37 C.F.R. § 1.475 is destroyed because the special technical feature of the control of a robot arm along a predetermined trajectory to deposit a predetermined quantity of polymer, thereby forming a leading edge protector, is known and does not make a contribution over the prior art.
(iii) As the name “unity of invention” implies, unity must exist between the claimed categories of invention, 37 C.F.R. § 1.475(b), not only when all of the individual claims are taken together. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. MPEP § 1850(II).
(iv) The burden on the Primary Examiner further extends to the patentability issues associated with, and evolving as a result of, searching additional inventions. Issues related to a process are frequently very different from those related to an apparatus or computer program/control. The issues related to the structural requirements of a coating apparatus need not be familiar to an examiner of specific coating processes. Consequently, examination of process claims 1-10, apparatus claims 11-14, and computer program 15 present a serious burden on the Primary Examiner both because of (1) a divergent or non-overlapping search related to the separate classification of the inventions and (2) the evolution of patentability issues related to searching multiple and distinct inventions. For example, the examination of a computer program claim in particular is likely to raise significant non-prior art issues under 35 U.S.C. § 101 and/or § 112(a), and is sufficient to establish a serious examination burden. MPEP § 808.02.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/04/2026.
Information Disclosure Statement
The Primary Examiner has considered the IDS filed 11/14/2024.
Drawings
The drawings filed 11/14/2024 are acceptable. See MPEP § 608.02(b)(I).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “homogeneous” in claim 2 is a relative term which renders the claim indefinite. The term “homogeneous” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In what way is the layer homogeneous? Must it have the same composition throughout? The same thickness? How homogeneous must it be to be included within the scope of the claim? How heterogenous may it be and still be included within the scope? The metes and bounds are impossible to determine.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Teichert (US 2005/0042102 A1).
Claim 1
Teichert teaches a process for depositing a paint or lacquer [0147] or other sealing agent [0146] onto the entire surface of a wind turbine rotor blade [0002]. Because the entire surface of the blade is coated, the leading edge is necessarily covered. The process comprises:
providing a robot (10) on an arm (9) (i.e., a “robotic arm”) that guides nozzle(s) (26, 46) [0118, 0140];
providing a supply of paint, lacquer, wax, or other sealing agent [0147]; and
actuating the robot arm to guide the nozzles (26, 46) along a predetermined trajectory (i.e., up-and-down; see arrows in Fig. 4) within a deposition region (i.e., the entire surface of the blade; see [0146] detailing the up-and-down motion) while dispensing a predetermined quantity of paint, lacquer, wax, or other sealing agent (i.e., “predetermined” here being an amount sufficient to achieve the desired coating) within the deposition region, which paint, lacquer, wax, or other sealing agent subsequently cures [0147; “drying, curing, etc., of paint”] to form the leading edge protector.
It is the Primary Examiner’s position that paint, lacquer, and even wax and conventional sealants contain polymers and read on the claimed “fluid polymer material” as this is how a film of the paint, etc., is formed. In the alternative, polymeric paints, lacquers, waxes, and sealants are common and conventional in the coating art and it would have been readily obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of Teichert so as to utilize, as the paint, lacquer, wax, or sealant, a polymer-containing compound. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully providing the turbine blade with a paint and/or protective coating.
Claim 2
Teichert teaches a pre-defined trajectory, supra. It is the Primary Examiner’s position that Teichert’s application results in a homogeneous layer insofar as the entire blade is coated. In the alternative, it would have been obvious to one of ordinary skill in the are before the effective filing date of the claimed invention to have applied a homogeneous coating because an non-homogenous coating risks a weight and/or drag imbalance on the blade, thereby reducing its efficiency.
Claim 3
Teichert teaches that the pre-defined trajectory includes the entire surface of the blade, supra. This would be inclusive of both the suction and pressure sides of the blade.
Claim 4
Teichert teaches all of the limitations of this claim, supra, except calculating a nozzle velocity to achieve a desired material deposition, and moving the nozzle at the calculated velocity relative to the surface of the rotor blade. Nevertheless, it is the Primary Examiner’s position that the nozzle(s) (26, 46) must move at some velocity and that the velocity must be that at which the desired paint coating is formed. Consequently, in order to ensure the formation of the desired coating, it would have been obvious to one of ordinary skill to calculate the rate at which the nozzle(s) (26, 46) must move and to utilize that rate.
In the alternative, the rate at which the paint, lacquer, wax, sealant, etc., is applied in Teichert is a result-effective variable: the rate must be fast enough to avoid forming a coating that is too thick, but not so fast as to result in uneven coverage. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the nozzle velocity by routine experimentation. See MPEP § 2144.05(II)(A). Moreover, there is nothing of record to indicate that selection of a coating rate would have been anything more than an exercise of ordinary skill in the art. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Claim 5
Teichert teaches all of the limitations of this claim, supra, except that the nozzle(s) (26, 46) are held by a rotatable end effector. Nevertheless, Teichert teaches the “robot may carry out a number of treatment forms, and these may be combined in any imaginable way” [0145]. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrange the nozzles in whatever manner is best-suited to application of the paint, lacquer, wax, sealant, etc., including one in which they rotate. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully applying the coating to the blade.
Claim 6
It is the Primary Examiner’s position that Teichert’s nozzle(s) (26, 46) are arranged generally perpendicularly to the blade. I the event they are not, as noted above, Teichert teaches the “robot may carry out a number of treatment forms, and these may be combined in any imaginable way” [0145]. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrange the nozzles in whatever manner is best-suited to application of the paint, lacquer, wax, sealant, etc., including one in which they are arranged perpendicularly to the substrate. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully applying the coating to the blade.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grishauge et al. (US 2019/0309733 A1).
Claim 1
Grishauge teaches a process for applying a repair coating material to the leading edge of a wind turbine blade (25) (i.e., a protector onto a leading edge region) [0037]. The process comprises providing a 3D printing head (93) (i.e., nozzle) attached to a robot arm to deposit liquid coating material (i.e., supply of the material is therefore inherent); and actuating the robot arm to guide the 3D print head (93) and dispense the coating material in the repair region (i.e., deposition region) previously identified and mapped by 3D scanning (i.e., a predetermined trajectory) to perform the repair.
Claim 2
Grishauge further teaches restoration to the native state, in which the damaged area is repaired and there is no modification to the uniformity of the leading edge coating, which reads on the claimed homogeneous layer [Fig. 9; 0039].
Claim(s) 3, 4, 6, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grishauge et al., supra.
Claim 3
Grishauge teaches all of the limitations of this claim, supra, except that a path segment of its predefined trajectory extends between the suction and pressure sides of the blade. Nevertheless, it is the Primary Examiner’s position that, should the damage extend this far, Grishauge’s 3D scanning and resultant 3D printing would result in the application of the material over this area. Consequently, it would have been obvious to one of ordinary skill in the art to employ the method of Grishuage so as to repair a damaged area of the leading edge extending from the pressure side to the suction side.
Claim 4
Grishauge teaches all of the limitations of this claim, supra, except calculating a nozzle velocity to achieve a desired material deposition, and moving the nozzle according to the calculate velocity relative to the surface of the rotor blade. Nevertheless, it is the Primary Examiner’s position that the 3D print head must move at some velocity and that the velocity must be that at which the desired repair coating is formed. Consequently, in order to ensure the formation of the desired repair coating, it would have been obvious to one of ordinary skill to calculate the rate at which the 3D print head must move and to utilize that rate.
In the alternative, the rate at which the repair matierl is applied in Teichert is a result-effective variable: the rate must be fast enough to avoid forming a coating that is too thick, but not so fast as to result in uneven coverage. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the 3D print head velocity by routine experimentation. See MPEP § 2144.05(II)(A). Moreover, there is nothing of record to indicate that selection of a coating rate would have been anything more than an exercise of ordinary skill in the art. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Claim 6
Grishauge teaches all of the limitations of this claim, supra, except that the robot arm is actuated to maintain a perpendicular orientation of the 3D print head relative to the surface of the rotor blade. The Primary Examiner notes that a generally perpendicular orientation is illustrated in Fig. 4, but in any case, it would have been obvious to one of ordinary skill in the art to orient the 3D print head in whatever fashion necessary so as to be able to effectively carry out the repair.
Claim 7
Grishauge teaches all of the limitations of this claim, supra, except that the fluid polymer material is provided as a filament of softened thermoplastic feedstock. Grishauge teaches that the coating material can be thermoplastic [0036]. It is well-known in the 3D printing art to supply a thermoplastic material to a 3D print head in the form of a filament feedstock (e.g., FDM) and it would have been obvious to one of ordinary skill in the art to do so as part of following Grishauge’s teaching that the 3D print head is one known in the art [0036].
Allowable Subject Matter
Claims 8-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is of record. The prior art neither teaches nor suggests the steps of initially arranging a sheet of thermoplastic material onto the leading edge region prior to deposition of the polymer material. Placement of such a sheet would appear to go beyond the capabilities of the process and apparatus disclosed in the prior art, which simply applies a coating material and does not supply, manipulate, etc., a sheet. Moreover, the prior art does not teach or suggest rotating the blade along its longitudinal axis as the prior art teaches in situ repair during which such rotation appears impossible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
17 April 2026
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