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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “beams” (claim 2) and the “tensioner” (claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. (The specification concedes that beams as well as the tensioner are “(not shown in the drawing).”
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. With respect to “tensioner” nowhere is there shown or described an element(s) the provide tension or the ability to increase tension.
As the courts have made clear, 35 U.S.C. § 112(a) contains a written description requirement that is separate and distinct from the enablement requirement. See Ariad Pharms., Inc. v. Eli Lifly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc) (hereinafter "Ariad"). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Vas-Cath, 935 F.2d at 1562-63; Ariad, 598 F.3d at 1351.
Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. See Ariad, 598 F.3d at 1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968(Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement"). In addition, the claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language, but the specification does not sufficiently identify how the invention achieves the claimed function. Ariad, 598 F.3d at 1349 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568). In other words, verbatim language in the specification does not qualify as supportive.
Applying the above legal principles to the facts of the case at hand, the examiner concludes that the Applicants' disclosure fails to sufficiently disclose possession at the application filing because tensioner being a generic reference repeated in the claims and specification fails to describe the respective element(s) in sufficient detail such that one having ordinary skill in the art would know the scope and breadth of Applicants invention. Within the art of tensioning lines, e.g. wires and cables, means such as winches, tension springs and gas spring are well known. Applicant’s disclosure fails to describe any or all of the well known means.
MPEP 2163 states that “"The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005).” The disclosure in the specification and drawings fails to demonstrate that the applicant had possession of the invention at the time of the filing of the instant application.
Because the disclosure of the instant application fails adequately to describe the structure and functionality described above, it fails to clearly convey the information that the applicant has invented the subject matter which is claimed. The dependent claims inherit the deficiency of their respective parent claims.
Applicant is reminded this is a written description rejection, not an enablement rejection. In other words, it is not what a skilled artisan knew but what Applicant had in its position at the time of invention.
Claims 2, 3 & 6 are rejected by virtue of depending from claim 1.
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.
Claims 1, 4 & 5 are 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.
Claim 1: the following limitation is grammatically confusing:
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The recitation positively recites lines 5 be anchored to a nacelle 2 as well as ground near an onshore wind turbine and a jacket of an offshore wind turbine. The specification discloses two different embodiments but fails to disclose both in one embodiment, e.g. anchored at both an onshore wind turbine AND an offshore wind turbine. Instead, the claims should recite that the retaining lines are optionally anchored to either a ground surface near an onshore wind turbine or a jacket of an offshore wind turbine.
Claims 4 & 5 depend from “the first claim” which is not proper dependency claiming nomenclature per USPTO format. For purposes of examination the first claim is interpreted as claim 1. Also, claim 4 is indefinite for claiming three embodiments in one claim. The claim recites “using an auxiliary crane,…using a crane on a ship…using a crane on a dock.” Nowhere is there shown or disclosed all three crane locations in a single embodiment. The claim should recite optional language such as: --and using an auxiliary crane for an onshore wind turbine or using a crane on a ship or a crane on a dock for a floating or fixed offshore wind turbine--.
Appropriate correction is respectfully requested.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4, 5, 6 & 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fenger (US 11,092,139) in view of Neumann (US 10,066,601) and Frido Cruciani (aka Cruciani) (US 3,333,713).
Interpretative note 1. Applicant is respectfully reminded that to be entitled to patentable weight in method claims, the structural limitations recited therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. See Ex parte Pfeiffer, 135 USPQ 31 (1961).
Interpretative note 2. Method claims 7-11 mirror apparatus claims 1-6 have been incorporated in the rejections.
With respect to claims 1, 7 & 11, Fenger discloses-
passive and semi-rigid retaining lines 602, 602 are anchored on one side to a nacelle 3, 620, 621 and on another to a ground (indicated generally as the location of (onshore wind turbine) and to a jacket (offshore wind turbine), forming a catenary or safe path to lower a blade vertically, without hitting it against a tower, a ground or a jacket,
a clip 612 (FIG. 3b) hoistable from a nacelle, is fixed to an end of a blade 5, slides between retaining lines 602, 602 (pulley’s 618, 618 move along lines 602, 602) accompanying it during an operation of lifting and lowering system fixed inside a rotor and guides a tip of a blade or without leaving retaining lines during horizontal arrangement if an auxiliary crane is not used,
retaining lines 602, 602 form a catenary and
operate with a tension provided or in a lower anchor 601, 601 of a ground or
Fenger discloses a lifting and lowering system 601, 901 does not disclose a lifting and lowering system fixed inside a rotor or retaining lines independent of a lifting and lowering system fixed inside a rotor.
Neumann discloses a lifting and lowering system 56, 56 fixed inside a rotor (C10/L22: “lift cables 56 may be secured to the [clip] 50 and may extend upward to an up-tower location, such as at a location on and/or within the hub 20 or the nacelle 16”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the invention of Fenger to include a lifting and lowering system fixed inside a rotor, as taught by Neumann, because, under the teachings in KSR, both references address blade stability during raising and lowering, both Fenger and Neumann provide solutions directed to predictable, improved control compared to flexible lines, the combination yields an improvement using known techniques, the modification is a simple substitution of one known guide line type (semi rigid catenary) for another (flexible stabilizing lines) and the combination does not change the fundamental operation of the system.
And, Cruciani discloses-
passive and semi-rigid retaining lines 1, 1’ that are anchored at each end as at 11, 11’, 12, 12’, forming a catenary or safe path to lower an article vertically, and
retaining lines independent of a lifting and lowering system 10, 10’.
It would have been obvious to one of ordinary skill in the art to modify the stabilizing line blade lowering system of Fenger to include guide lines independent of a lifting and lowering system, as taught by Cruciani, because, under the teachings of KSR, both Fenger and Cruciani provide solutions in the raising and lowering articles between disparate elevations and along passive, semi-rigid retaining lines, Cruciani’s improves retaining line system of Fenger by improving stability and reducing interference between the lifting and guiding functions, the modification is a simple substitution of one known guide line configuration (independent guide lines) for another (integrated stabilizing lines) which does not impact the operability of Fenger.
With respect to claim 4, Fenger discloses that a clip 612 rotates along a catenary and horizontalizes a blade by releasing it from retainers and using an auxiliary crane for an onshore wind turbine, using a crane on a ship and a crane on a dock for a floating or fixed offshore wind turbine, which is applied in all cases to a tip of a blade which covers a first third thereof.
With respect to claim 5, Fenger discloses that clip 612 rises and is attached to a tip of a blade by means of or automatic elements 617 arranged in a nacelle.
With respect to claim 6, Fenger discloses a tension via winches 601, 601applied to retained lines with tensioners of a ground.
Claim(s) 2, 3, 8, 9 & 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fenger in view of Neumann and Cruciani and further in view of Angman (US 8,192,127).
Fenger does not disclose a counterweight. Angman discloses a lower anchor 33 that joins retaining lines 14 forming a catenary is formed by a counterweight (the structure to which coupler 33 is anchor discloses vertical beam-like features) anchored to a ground. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the invention of Fenger to include a counterweight of beams, as taught by Angman, which provides a lifting and lowering system that can accommodate various heights at which articles must be lift as opposed to fixed robots.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY W ADAMS whose telephone number is (571)272-8101. The examiner can normally be reached Mon - Fri, 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Saul Rodriguez can be reached at (571)272-7097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY W ADAMS/ Primary Examiner, Art Unit 3652
