Ex Parte Hollowell et al

Patent Trial and Appeal Board

Sep 15, 2017

13872178 (P.T.A.B. Sep. 15, 2017)

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.
13/872,178 04/29/2013 Richard L. Hollowell 60469-054PUS2;4986US-AA 7609
64779 7590 09/19/2017
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
EXAMINER
KRUER, STEFAN
400 W MAPLE STE 350
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
frederic .tenney@otis.com
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD L. HOLLOWELL, HUGH J. O’DONNELL,
PEDRO BARANDA, and JOHN T. PITTS
Appeal 2017-002649
Application 13/872,178
Technology Center 3600
Before JOHN C. KERINS, MICHAEL L. HOELTER and
HYUN J. JUNG, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002649
Application 13/872,178
STATEMENT OF THE CASE
Richard L. Hollo well et al. (Appellants) seek our review under 35
U.S.C. § 134(a) of the Examiner’s final rejection of claims 1—5. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, and designate part of our
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
THE INVENTION
Appellants’ invention is directed to an elevator belt assembly.
Independent claim 1 is illustrative:
1. An elevator belt assembly, comprising:
a plurality of cords aligned generally parallel to a longitudinal
axis of the belt along a length of the belt; and
a jacket over the cords, the jacket including a generally smooth,
uninterrupted exterior surface extending along the entire belt
length that is adapted to contact other components in an elevator
system as the belt moves, wherein the jacket comprises a
polyurethane material that does not include wax additives, the
polyurethane material providing friction characteristics to the
exterior surface including a friction characteristic that ensures
proper traction of the belt assembly during elevator operation.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1—5 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
(ii) claims 1—3 under 35 U.S.C. § 103(a) as being obvious over Adifon
(WO 99/43590 Al, published Sept. 2, 1999) in view of Harper (US
3,848,037, issued Nov. 12, 1974); and
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(iii) claims 4 and 5 under 35 U.S.C. § 103(a) as being obvious over
Adifon in view of Harper and Baranda (WO 00/37738 Al, published June
29, 2000).
ANALYSIS
Claims 1—5—Indefiniteness
The Examiner finds indefinite the scope of the language in claim 1
reciting that the polyurethane material provides friction characteristics to the
exterior surface including a friction characteristic that ensures proper
traction of the belt assembly. Final Act. 2. Pointing to the fact that the
Specification refers only to a coefficient of friction as a friction
characteristic, the Examiner questions whether friction characteristics other
than a coefficient of friction would fall within the scope of claim 1, or are
the claimed friction characteristics limited solely to coefficients of friction.
Id.
Appellants maintain that, based on the claim language, “there are
multiple friction characteristics,” in that the term “friction characteristics” is
recited in plural form, and that such characteristics, plural, include a
characteristic that ensures proper traction of the belt during elevator
operation. Appeal Br. 3. Appellants further note that, because a coefficient
of friction exists between two surfaces, and because there are not two
surfaces recited, “a friction co-efficient is not recited” in claim 1. Id.
Appellants additionally aver that “a person of ordinary skill in the art would
understand that the friction characteristics of the jacket on the belt would (in
cooperation with the surface on the sheave) result in a co-efficient of friction
of a particular value.” Id. Appellants note, in the Reply Brief, that the
points raised in the Examiner’s Answer point to no disagreement with
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Appellants’ position, and that the Examiner inferentially admits that there is
no indefmiteness problem. Reply Br. 1.
The Examiner’s position, based on the arguments advanced in the
Appeal Brief, is that the limitation in question is regarded as being met by
any polyurethane material used to make a jacket of an elevator belt.
Appellant does not object to this claim construction, and we adopt it for the
purposes of deciding the propriety of the unpatentability rejections.
However, we do not accept this claim construction as evidence of the
definiteness of the claims.
Appellants’ position effectively admits that whether or not a particular
elevator belt assembly has the requisite friction characteristic so that proper
traction during elevator operation is ensured will depend on the particular,
yet unclaimed, sheave, or other belt-engaging member, as well as the entire,
also unclaimed, design of a given elevator system, including the loads to be
borne by the elevator belt. In other words, a specific elevator belt may
possess such frictional characteristic when used in conjunction with a
particular sheave in a particular elevator system, yet not possess such a
frictional characteristic when used with a different sheave and/or elevator
system.
With regard to the requirement, in the second paragraph of 35 U.S.C.
§112, for ‘“particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention,”’ it has been stated that
the “essence of that requirement is that the language of the claims must
make it clear what subject matter they encompass.” In re Hammack, 427
F.2d 1378, 1382 (CCPA 1970). This has been frequently stated in a
shortened form as a requirement that the claims set forth the “metes and
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bounds” of their coverage. See, e.g., In re Venezia, 530 F.2d 956, 958
(CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re
Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481 F.2d 1357,
1366 (CCPA 1973). This requirement is normally viewed from the
perspective of a potential infringer, “so that they may more readily and
accurately determine the boundaries of protection involved and evaluate the
possibility of infringement and dominance.” Hammack, 427 F.2d at 1382.
In the present situation, claim 1 does not permit competitors to ascertain
whether a particular elevator belt assembly infringes or does not infringe,
until a particular sheave and elevator system as a whole is selected for use.
In situations where a person of ordinary skill in the art is not able to
determine whether a particular device infringes or not, the scope of the claim
is not sufficiently definite under 35 U.S.C. §112, second paragraph.
Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367,
1371 (Fed. Cir. 2005), quoting Geneva Pharms., Inc. v. Glaxosmithkline
PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003).
Accordingly, the language of claim 1 is not sufficiently definite such
that those skilled in the art would understand what is being claimed when the
claim is read in light of the Specification. Claims 2—5 depend from claim 1
and are thus are also indefinite under 35 U.S.C. § 112, second paragraph, by
virtue of their dependency from claim 1. The rejection of claims 1—5 is
therefore affirmed, but is designated as a new ground of rejection under 37
C.F.R. § 41.50(b), in that our reasoning extends beyond that of the
Examiner.
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Claims 1—3—Obviousness—Adifon/Harper
Independent claim 1 is directed to an elevator belt assembly having a
plurality of cords and a jacket over the cords, wherein the jacket comprises a
polyurethane material that does not include wax additives (hereafter
“waxless polyurethane” for short). Appeal Br., Claims Appendix. The
Examiner found that Adifon discloses the claimed belt, with the exception of
an express disclosure of the belt comprising a waxless polyurethane. Ans. 7.
The Examiner concluded that it would have been obvious, in view of
Harper, to produce the Adifon elevator belt using a conventional mold
release agent such as wax, and a barrier layer intermediate the belt and the
release agent, in order to eliminate the need to use a wax additive in the
polyurethane belt material itself for mold release purposes, in order to obtain
a smooth, wax-free surface on the belt. Final Act. 4. The Examiner notes
that this wax-free belt surface will allow the belts to be marked or painted
with various attributes of the belt, such as materials of construction,
operating capacity, or for inventory coding. Id.
Appellants maintain that the Harper teachings do not relate to
establishing friction characteristics for the belt so that it will have proper
traction during elevator operation. Appeal Br. 3^4. Appellants further
relatedly argue that whether or not an article may be painted after release
from a mold also has no bearing on obtaining desired friction characteristics
for a belt for eventual use in elevator operation. Id. at 4. The Examiner
responds to both of these arguments by pointing out that Adifon, and not
Harper, is relied on as teaching a belt having friction characteristics that are
suitable for eventual use in elevator operation, which the record accurately
reflects. Ans. 5, 6.
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Appellants argue that neither of the references teaches the use of a
polyurethane material that does not include wax additives to provide friction
characteristics to a belt surface to ensure proper traction of the belt in
elevator operation. Appeal Br. 4. The Examiner points out that Adifon does
not preclude the possibility that the polyurethane used to make the belt in
that reference is wax-free. Ans. 5. Although the issue is not squarely before
us, given that the Examiner relies additionally on Harper, it seems that it
would be fair to assume that the fact that Adifon does not mention the
inclusion of any wax additives in the polyurethane used therein means that
the polyurethane is wax-free. Harper evidences in two ways that the
polyurethane used therein is wax-free, albeit not disclosed for use as an
elevator belt coating. Harper provides several working examples, describing
the composition of each, and no mention is made of any wax additive.
Harper, col. 6,1. 48—col. 9,1. 51. Harper’s express disclosure that the
surface of the cast polyurethane products is wax-free is also indicative that
the polyurethane itself does not contain wax. See, e.g., Harper, col. 6,11. 49—
51. These portions of Harper also belie the argument made in the Reply
Brief that “[t]here is nothing in the Harper reference that teaches that the
polyurethane used for the molded article does not include wax additives.”
Reply Br. 2.
Appellants additionally argue that the technique in Harper employing
a barrier layer material interposed between the polyurethane being cast and
the conventional mold release material (e.g., wax), would not be useful in
the context of making an elevator belt via an extrusion process operating in a
continuous manner. Appeal Br. 5. Appellants posit that the mold release
agent and barrier layer proposed for use by Harper would not be present on
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the entire length of the jacket, that the mold would have to be recoated
multiple times during the process, that the technique would require
interrupting the molding process repeatedly, and would render the process
prohibitively expensive. Appeal Br. 5—6.
The Examiner is correct in noting that Appellants do not provide any
evidence to support the statement that a continuous extrusion process would
not easily be used with the teachings of Harper. Ans. 7. Invitrogen Corp. v.
Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated
attorney argument is no substitute for competent evidence); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
Appellants point to specific aspects of the Harper disclosure, and
assert that those aspects would not readily lend themselves to continuous
extrusion processes. Appeal Br. 5—6. We first note that Adifon does not
disclose that the belt proposed for use therein is manufactured in a
continuous extrusion process, rather Appellants simply assume that to be the
case. To the extent that the Adifon belt is manufactured as an individual
article, the arguments are baseless. Further, even in the realm of continuous
extrusion processing, Appellants do not argue that whatever modifications, if
any, might be needed to adapt Harper’s application of a mold release
material and a barrier layer to the surface of the belt cover being formed to
product the Adifon belt would be beyond the capabilities of persons of
ordinary skill in the art.
Appellants have failed to apprise us of error in the Examiner’s
rejection of claim 1 as being unpatentable over Adifon and Harper. Claims
2 and 3 are not separately argued, and are thus grouped with claim 1. The
rejection of claim 1 is sustained, and claims 2 and 3 fall with claim 1.
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Claims 4 and 5—Obviousness—Adifon/Harper/Baranda
Appellants argue that the rejection of claims 4 and 5 is deficient for
the same reasons presented with respect to claim 1. Appeal Br. 7. As
discussed above, we are not apprised of any deficiency in the rejection. This
rejection of claims 4 and 5 is therefore sustained.
DECISION
The rejection of claims 1—5 under 35 U.S.C. §112, second paragraph,
is AFFIRMED, and the affirmance is designated as a new ground of
rejection in accordance with 37 C.F.R. §41.50(b).
The rejections of claims 1—5 under 35 U.S.C. § 103(a) are
AFFIRMED.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
that, "[Ajppellant may file a single request for rehearing within two months
from the date of the original decision of the Board."
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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