Ex Parte Aulanko et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201310452311 (P.T.A.B. Feb. 22, 2013) Copy Citation 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. 10/452,311 06/03/2003 Esko Aulanko 8959-000004/US 9126 30593 7590 02/22/2013 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER KRUER, STEFAN ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 02/22/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ESKO AULANKO, JORMA MUSTALAHTI, PEKKA RANTANEN, and SIMO MAKIMATTILA ____________________ Appeal 2010-009207 Application 10/452,311 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, JILL D. HILL, and BEVERLY M. BUNTING Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009207 Application 10/452,311 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 22. Appellants’ representative presented oral argument on February 11, 2013.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART but designate the affirmed rejections as NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b). The Invention Appellants’ claimed invention relates to an elevator. Spec. 1:8-9. Claims 1 and 22 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An elevator without a machine room, the elevator comprising: a hoisting machine; a set of hoisting ropes; a traction sheave; a counterweight; an elevator car; counterweight guide rails; and elevator car guide rails; wherein the hoisting machine engages the set of hoisting ropes via the traction sheave, wherein the set of hoisting ropes includes a load-bearing part twisted from steel wires of circular, non-circular, or circular and non-circular cross-section, wherein the hoisting ropes support the counterweight moving on the counterweight guide rails and the elevator car moving on the elevator car guide rails, and wherein a weight of the hoisting machine is at most about 1/5 of a weight of a nominal load of the elevator. 1 This case is related to Patent Trial and Appeal Board appeals: 2010- 007006, 2011-002984, and 2010-009194. Appellants presented oral argument for all four cases on this date. Appeal 2010-009207 Application 10/452,311 3 Evidence Relied Upon2 Gladenbeck Wilcox Yoo Miller Aulanko Baranda De Josez Strbuncelj de Jong Cordonnier US 4,022,010 US 4,624,097 US 5,490,577 US 5,899,300 US 6,199,666 B1 US 6,401,871 B2 US 6,412,264 B1 US 6,601,828 B2 US 6,631,789 B1 US 6,667,110 B1 May 10, 1977 Nov. 25, 1986 Feb. 13, 1996 May 4, 1999 Mar. 13, 2001 Jun. 11, 2002 Jul. 2, 2002 Aug. 5, 2003 Oct. 14, 2003 Dec. 23, 2003 Janovsky, Elevator Mechanical Design Principles and Concepts, Ellis Horwood Limited, 120 (1987) (hereafter “Janovsky”). The Rejections The following rejections are before us on appeal: I. Claims 1, 5, 8, 10-13, 18, 19, and 21 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, and Aulanko; II. Claims 2 and 3 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, and Cordonnier; III. Claim 4 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, and Strbuncelj; IV. Claims 6 and 7 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, Baranda, and Janovsky; V. Claims 9 and 20 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, and Miller; 2 Wilcox and de Jong are not listed in the Evidence Relied Upon, but are used in the grounds of rejection and therefore are listed here. Ans. 4, 15. Appeal 2010-009207 Application 10/452,311 4 VI. Claim 14 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, and Gladenbeck; VII. Claims 15 and 16 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, and Baranda; VIII. Claim 17 under 35 U.S.C. § 103(a) as obvious over Yoo, De Josez, Aulanko, and Wilcox; and IX. Claim 22 under 35 U.S.C. § 103(a) as obvious over Yoo, de Jong, De Josez, and Aulanko. The Office Action that is the subject of this appeal also contained a rejection under 35 U.S.C. § 112 and two provisional nonstatutory, obviousness-type double patenting rejections; however, these rejections are not before us on review. See Office Action dated July 23, 2009 at 2-3; Ans. 3. OPINION The Examiner concluded that the subject matter of independent claim 1 would have been obvious over Yoo, De Josez, and Aulanko.3 Ans. 4-6. Appellants contend that this proposed combination does not disclose the limitation of independent claim 1 that the weight of the hoisting machine 3 Appellants argue claims 1, 5, 8, 10-13, 18, 19, and 21 as a group, and we select claim 1 as representative. See App. Br. 39-40. Appeal 2010-009207 Application 10/452,311 5 is at most about 1/5 of the weight of the nominal load4 of the elevator. App. Br. 37-39. Specifically, Appellants argue that Aulanko discloses axle load rather than nominal load and therefore does not disclose or suggest the claimed ratio. App. Br. 38-39; Reply Br. 9-10. We construe the limitation at issue, and then examine the prior art in light of that claim interpretation and Appellants’ contention. Independent claim 1 calls for the weight of the hoisting machine to be at most about 1/5 of a weight of the nominal load of the elevator. Appellants’ Specification states that the size and weight of hoisting machines is a limiting factor in elevator solutions. Spec. 1:10 to 2:8. The claimed invention is intended to improve space utilization in the building and elevator shaft, and reduce the size or weight of the elevator or at least the elevator machine. Spec. 3:5-15. The Specification states that the ratio of hoisting machine weight can be reduced to be at most 1/5 of the nominal load. Spec. 15:5-7. The Specification states that other ratios may be achieved, such as 1/2, 1/6, 1/7, 1/8, and 1/10. See, e.g., Spec. 15:8-24. The Specification does not state that any of these ratios produce unexpected results, nor does the Specification state that any of these ratios 4 “Nominal load” is synonymous with “maximum working load,” and refers to the load carrying capacity of the elevator car. See Spec. p. 3 (as amended September 11, 2009); App. Br. 7 (indicating this amendment was entered); Ans. 3 (indicating Appellants’ statement of the status of amendments in the Appeal Brief is correct). Given this, and the reasons argued by Appellants, we do not agree with the Examiner’s interpretation that “nominal load” as claimed equates to “axle load.” See Ans. 17; App. Br. 25-25; Reply Br. 7- 10. Appeal 2010-009207 Application 10/452,311 6 are critical.5 Rather, Appellants’ Specification merely indicates a general preference for a lower ratio of hoisting machine weight to the nominal load of the elevator. Therefore, the hoisting machine to nominal load weight ratio of claim 1 is not a critical ratio and does not produce unexpected results; rather, this ratio defines a range (about 1/5 or less) along the spectrum of the ratio of hoisting machine weight to nominal load. Having looked at the claimed subject matter in light of the Specification, we examine Appellants’ argument as it relates to the prior art. While Appellants are correct that Aulanko discloses axle load rather than nominal load, for the reasons that follow, Appellants’ argument does not demonstrate the nonobviousness of claim 1. See Aulanko col. 2, ll. 61- 67. To begin, Appellants’ contention narrowly addresses the distinction between axle load and nominal load, and does not address the reference as a whole. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (the prior art must also be considered as a whole). Aulanko discloses the desirability of reducing elevator hoisting machine size and weight. Col. 1, l. 15 to col. 2, l. 67. Aulanko elaborates that reduced size and weight of the hoisting machine as compared to load capacity makes the machine easy to implement in terms of machine room layout and installation. Col. 3, ll. 48-50. As a specific example of such weight reduction, the weight of the hoisting machine may be reduced so that 5 At oral hearing, Appellants characterized the results as surprising. Such a line of argument is not contained in the Appeal or Reply Brief, and therefore is not addressed further here. Appeal 2010-009207 Application 10/452,311 7 it is at most about 1/8 of a weight of the axle load of the elevator.6 Col. 2, ll. 61-67; see also Ans. 5. In view of Aulanko as a whole, a person of ordinary skill in the art would understand the desirability of reducing the weight of the hoisting machine compared to the axle load, making the machine easier to implement in terms of machine room layout and installation.7 Depending on the portion of axle load attributable to nominal load, a range of hoisting weight to axle load of less than 1/8, as disclosed by Aulanko, corresponds to a hoisting machine weight to nominal load ratio of at most about 1/5, as claimed. Even if we assume that Aulanko does not disclose the claimed ratio, given that Aulanko teaches the desirability of lowering the hoisting machine weight to axle weight ratio and that nominal load is a contributing factor to axle load, the difference between the reference and the prior art is simply one of range. At most, the claimed subject matter differs only in degree and not kind from the results of the hoisting machine weight reduction approach disclosed by Aulanko. Further, Appellants have not alleged, much less shown, that the claimed ratio produces unexpected results or is otherwise critical. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“[E]ven though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges ‘produce a new and 6 An axle load of 40,000 kg and a hoisting machine weight of 5,000 kg. 7 Appellants concede this point by arguing that these terms were known at the time of the claimed invention. See App. Br. 25-35; Reply Br. 7-9. Appeal 2010-009207 Application 10/452,311 8 unexpected result which is different in kind and not merely in degree from the results of the prior art.’”). We further note that the Examiner reasoned that the minor difference between Aulanko and the claimed subject matter would have been an obvious matter of design choice, and that the claimed range does not achieve unexpected results. Ans. 6. Appellants’ argument is also unconvincing because it fails to cogently address these rationales. See Reply Br. 9-10. As such, we affirm the rejection of independent claim 1, and claims 5, 8, 10-13, 18, 19, and 21 fall with claim 1. With regard to Rejections III-VIII, Appellants argue based upon dependence from claim 1. With regard to Rejection IX, Appellants argue for independent claim 22 based upon the same limitation argued with respect to claim 1. App. Br. 42-44; see also Reply Br. 9-10. Therefore, our analysis of claim 1 is applicable to these rejections as well. As such, we sustain the rejection of claims 1 and 4-22. With regard to these rejections, our reasoning differs from, or elaborates on, the reasoning articulated in the Examiner’s rejections. Accordingly, we designate our affirmance NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b) to afford Appellants a full and fair opportunity to react to the thrust of the rejection. Regarding the second rejection, Appellants make an additional argument for claims 2 and 3. Claim 2 depends from claim 1, and adds that the steel wires of the hoisting ropes have a strength greater than about 2300 N/mm2 and less than about 2700 N/mm2. Claim 3 depends from claim 1, and adds that the steel wires of the hoisting rope have a cross-sectional area greater than about Appeal 2010-009207 Application 10/452,311 9 0.015 mm2 and less than about 0.2 mm2. The Examiner found, and Appellants do not contest, that Cordonnier discloses steel wires having strength and cross sectional area within the claimed ranges. Ans. 10; App. Br. 40-42; Reply Br. 10-13. The Examiner concluded that it would have been obvious to modify the steel wires of the proposed combination to have a cross-sectional area and strength, as disclosed by Cordonnier, “to facilitate in supporting a high load capacity within the elevator car.” Ans. 10. Appellants argue that the Examiner’s conclusion is not supported by adequate rationale because Cordonnier would not have led a person of ordinary skill in the art to make the proposed modification. App. Br. 40-42; Reply Br. 10-13. Cordonnier makes no explicit disclosure related to supporting a high load capacity within an elevator car. Rather, Cordonnier discloses new steel cords for tires having improved endurance and fatigue-fretting-corrosion8 resistance as compared to conventional cords having only carbon steel wires. Col. 2, ll. 14-37; see also App. Br. 40-42; Reply Br. 10-13. The Examiner acknowledges the lack of explicit support in Cordonnier by conceding that Cordonnier “is primarily directed to reinforcement of tires,” but finds that Cordonnier’s disclosure is applicable to belts as well. Ans. 20. Cordonnier’s improved steel cords may be used to reinforce articles made of plastic and/or rubber, such as belts. Col. 2, l. 66-col. 3, l. 3; see also col. 1, ll. 5-7; col. 3, ll. 4-10 (emphasizing uses in tires). However, 8 Fatigue-fretting-corrosion is caused by repeated bending or variations of curvature of tires while rolling that causes the wires to rub against one another and undergo wear and fatigue. Col. 1, ll. 28-41; see also col. 5, l. 52 - col. 6, l. 25. Appeal 2010-009207 Application 10/452,311 10 Cordonnier does not further specify the type of belts referred to. Nor does the Examiner explain how this general disclosure regarding belts is applicable to hoisting ropes or belts for elevators. In light of this, Cordonnier’s disclosures are not explicitly related to “supporting a high load capacity within an elevator car” and the Examiner has not adequately explained how a person of ordinary skill in the art would recognize that Cordonnier’s disclosures are applicable to such use. See Ans. 5-6. Rather than providing articulated reasoning with a rational underpinning, the Examiner has merely demonstrated that each of the elements was independently known in the art.. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As such, we do not sustain the rejection of claims 2 and 3. DECISION We affirm the Examiner’s decision to reject claims 1 and 4-22, but designate that affirmance as NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b). We reverse the Examiner’s decision to reject claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko, and Cordonnier. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must Appeal 2010-009207 Application 10/452,311 11 exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. … (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. … 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-IN-PART; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation