Ex Parte Baranda et al

Patent Trial and Appeal Board

Feb 28, 2017

11981346 (P.T.A.B. Feb. 28, 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.
11/981,346 10/31/2007 Pedro S. Baranda 4355US-C;60469-504PUS2 9210
64779 7590 03/02/2017
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
EXAMINER
KRUER, STEFAN
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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 PEDRO S. BARANDA, ARY O. MELLO,
and HUGH J. O’DONNELL
Appeal 2015-003029
Application 11/981,346
Technology Center 3600
Before JOHN C. KERINS, MICHAEL L. WOODS, and
AMANDA F. WIEKER, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pedro S. Baranda et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 51—57, 59—65, and 67—73.
See Appeal Br. 2—3 (appealing all prior art rejections); see also Final Act. 2—
9 (listing the pending rejections).1 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
1 We reference two Final Office Actions in this Decision; one dated April
29, 2014, and one dated September 13, 2013. Unless otherwise noted,
Appeal 2015-003029
Application 11/981,346
SUMMARY OF THE DECISION
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ invention relates to “tension members for . . . elevator
systems.” Spec. 1,11. 6—7. Claims 51, 59, and 67 are the independent
claims. Appeal Br. 7—9. We reproduce claim 51, below, with emphases
added to particular limitations at issue in this appeal.
51. A traction sheave for an elevator system,
comprising:
a sheave base;
a surface for receiving a tension member, the
surface being uninterrupted in a circumferential
direction;
wherein at least said traction sheave base is
made from a non-metallic material.
Appeal Br. 7.
THE REJECTIONS
I. Claims 51—53, 55—57, 59—61, and 63—65 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Ohta (US 4,465,161, issued Aug. 14,
1984) and Rabe (US 5,106,672, issued Apr. 21, 1992). Final Act. 2.
II. Claims 51, 54, 59, 62, and 67—70 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yamamori (Japanese Kokai Patent Application
No. HEI 9[1997]-21084, published Jan. 21, 1997) and Rabe. Final Act. 3.
III. Claims 51—53, 55—57, 59—61, and 63—65 stand rejected under 35
U.S.C. § 102(b) as anticipated by Rabe. Final Act. 5.
citations to “Final Act.” refer to the April 29, 2014, Final Office Action,
which is before us on Appeal.
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Application 11/981,346
IV. Claims 67—71 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Aulanko (WO 98/29326, published July 9, 1998) and
Rabe. Final Act. 7.
ANALYSIS
Rejection III: Claims 51—53, 55—57, 59—61, and 63—65
as Anticipated by Rabe
The issue before us is whether the Examiner’s interpretation of the
claimed “surface being uninterrupted in a circumferential direction” is
unreasonably broad and, more particularly, whether the Examiner’s finding
that Rabe’s surface 6 satisfies the claimed limitation constitutes reversible
error.
In rejecting the claims as anticipated by Rabe, the Examiner found
that Rabe’s surface 6 satisfies the claimed “surface for receiving a tension
member,” as surface 6 is “uninterrupted (i.e., ‘continuous,’ ‘endless’) in a
circumferential direction.” Final Act. 6 (citing Rabe, col. 1,11. 20—27). To
illustrate this finding, we reproduce Rabe’s Figures 1 and 4, below:
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Application 11/981,346
As described by Rabe, Figure 4 is a partially enlarged view of Rabe’s
Figure 1 embodiment. See Rabe, col. 2,11. 34—35, 39. These figures
illustrate surface 6 of gear-tooth system 4. Id. at col. 2,1. 59.
The Examiner interpreted the claimed “uninterrupted” surface as
being “continuous” or “endless.” Final Act. 6. In support of the finding that
Rabe’s toothed surface 6 is “uninterrupted,” the Examiner explained that
surface 6 is continuous and endless, as “the surface may follow the profile,
therein the tip, flanks and root of each of Rabe’s teeth.” See Ans. 3.
In contesting the rejection, Appellants argue, inter alia, that Rabe’s
surface 6 “is interrupted in a circumferential direction because it is a toothed
pulley” and that Rabe’s surface 6 “is the opposite of the arrangement
claimed.” Appeal Br. 2—3 (emphasis added).
Appellants’ argument is persuasive; the Examiner’s interpretation is
unreasonably broad.
Appellants’ construction gives a reasonable meaning to the phrase
“surface uninterrupted in a circumferential direction,” is consistent with the
disclosed embodiments, and considers the context of the surrounding words
of the claim. SeeACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.
Cir. 2003) (“While certain terms may be at the center of the claim
construction debate, the context of the surrounding words of the claim also
must be considered.”).
In the present case, the claims recite a “traction sheave” with a
“surface being uninterrupted in a circumferential direction.” Appeal Br. 7.
The Specification describes increasing the traction forces by increasing the
coefficient of friction between the sheave and elevator ropes. See Spec. 1,11.
23—26. Furthermore, the disclosed embodiments describe sheaves 24 with
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Application 11/981,346
traction surfaces 50 that engage tension members 22 frictionally, rather than
with a gear and tooth arrangement. See, e.g., id. at Figs. 2—6. A person of
ordinary skill in the art, upon reviewing the Specification, would understand
that the claimed “traction sheave [comprising] a surface for receiving a
tension member, the surface being uninterrupted in a circumferential
direction,” to exclude the gear-tooth surface 6 disclosed by Rabe, or any
other surface with protruding gear teeth. Accordingly, the Examiner’s
interpretation of the claim term is unreasonably broad.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 51—53, 55—57, 59—61, and 63—65 as anticipated by Rabe.
Rejection I: Claims 51—53, 55—57, 59—61, and 63—65
as Unpatentable over Ohta and Rabe
Appellants contest the rejection of claims 51—53, 55—57, 59-61, and
63—65 collectively. See Appeal Br. 3—5. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 51 as the representative claim to decide
the appeal of the rejection, with claims 52, 53, 55—57, 59-61, and 63—65
standing or falling with claim 51.
In rejecting claim 51, the Examiner found that Ohta discloses the
claimed “traction sheave” 2, with “sheave base” (spokes from 1 to 3),
“tension member” 5, and “surface” 4 for receiving the tension member.
Final Act. 2 (citing Ohta, Figs. 3, 4). To illustrate the Examiner’s findings,
we reproduce Ohta’s Figures 3 and 4, below:
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Ohta describes Figure 3 as depicting an elevator-winding device, with
Figure 4 further depicting a sectional view along Figure 3’s line IV-IV.
Ohta, col. 2,11. 8—13. In particular, Ohta describes these figures as
illustrating cast-iron drive sheave 2 with teeth 6 disposed in groove 3, and
with lining 4 mounted to cover teeth 6. Id. at col. 1,11. 15—16, col. 2,11. 25—
39.
Claim 51 requires the “sheave base [to be] made from a non-metallic
material.” Appeal Br. 7. The Examiner acknowledges that Ohta’s cast-iron
sheave 2 does not disclose this feature, and instead relies on Rabe’s
disclosure of pulleys “made of castable or extrudable polymeric material
reinforced by fillers.” See Final Act. 3 (citing Rabe, col. 1,11. 11—50).
Rabe discloses its belt pulley as a “disk-shaped basic body 2
reinforced with fibrous fillers.” Rabe, col. 2,11. 46-47. Rabe also discloses
“increased efforts” to use structural elements made of extrudable polymeric
materials reinforced by fibrous fillers due to their “high resistance and
rigidity.” Id. at col. 1,11. 11—17.
In combining Ohta with Rabe, the Examiner reasons that:
It would have been obvious to one of ordinary
skill in the art to modify the reference of Ohta et al
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with the teaching of Rabe to manufacture the
traction sheave of Ohta et al of a non-metallic
material for savings in cost and weight, wherein
savings in cost is attributable to materials of
construction, therein mass production afforded by
extrusion, and facilitated installation, i.e. ease of
replacement by personnel.
Final Act. 3 (emphasis added).
In contesting the rejection, Appellants propose several arguments,
which we address separately, below.
First, Appellants argue that Rabe “does not provide any suggestion or
motivation for replacing a metal sheave with a non-metallic sheave body.”
Appeal Br. 3.
Appellants’ first argument is not persuasive, as the Supreme Court
foreclosed it. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). In
KSR, the Court rejected the rigid requirement that a showing of obviousness
requires the prior art to expressly disclose a teaching, suggestion, or
motivation to combine known elements. Id.
Second, Appellants argue that the Examiner’s reasoning is not
sufficiently articulated. Appeal Br. 3; Reply Br. 2—3. In support of this
argument, Appellants state that the record does not support the Examiner’s
allegation that “Rabe’s material would provide a cost savings over a metal
sheave.” Appeal Br. 3.
Appellants’ second argument is not persuasive, as Appellants’
argument is conclusory and fails to respond fully to the Examiner’s
reasoning for combining Ohta with Rabe.
The Examiner reasoned that it would have been obvious to replace
Ohta’s cast-iron sheave 2 with Rabe’s non-metallic sheave for the following
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reasons; (1) savings in cost, and (2) savings in weight. Final Act. 3. The
Examiner explained that savings in cost is attributable to (1) mass
production afforded by extrusion, and (2) ease of replacement by personnel.
See id. Notwithstanding Appellants’ conclusory assertions otherwise, the
Examiner’s reasoning for combining Ohta with Rabe is sufficiently
articulated with rational underpinnings.
Third, Appellants argue, “the Examiner has completely altered the
cast-iron drive sheave of the Ohta reference and completely removed the
rubber liner from that sheave.” Appeal Br. 4. Appellants argue, “there is no
motivation or reason to completely redesign the entire sheave configuration
from the Ohta reference and replace it with a material from the Rabe
reference.” Id. at 5.
Appellants’ third argument is unpersuasive, as it is unresponsive to
the rejection before us and instead addresses a rejection from a prior Final
Office Action. Compare Final Act. 3 (dated Sept. 13, 2013), with Final Act.
(dated Apr. 29, 2014). Importantly, the rejection before us does not propose
to modify Ohta by “completely removing] the rubber liner from [its]
sheave,” as Appellants’ argument suggests (Appeal Br. 4), and as was
proposed in the prior rejection (see Final Act. 3 (dated Sept. 13, 2013)). As
explained above, the Examiner’s current modification simply replaces
Ohta’s cast-iron sheave 2 with Rabe’s non-metallic sheave. Final Act. 3.
Accordingly, we adopt the Examiner’s reasoning and findings and
sustain the rejection of claim 51, and claims 52, 53, 55—57, 59—61, and 63—
65, which fall with claim 51, under 35 U.S.C. § 103(a), as unpatentable over
Ohta and Rabe.
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Application 11/981,346
Rejection II: Claims 51, 54, 59, 62, and 67—70
as Unpatentable over Yamamori and Robe
Appellants contest the rejection of claims 51, 54, 59, 62, and 67—70
collectively. See Appeal Br. 5. Accordingly, we select claim 51 as the
representative claim to decide the appeal of the rejection, with claims 54, 59,
62, and 67—70 standing or falling with claim 51.
In rejecting claim 51, the Examiner found that Yamamori discloses
tension members with applicability, for example, to elevator suspension
systems, and the Examiner relies on Yamamori’s “sheave” 52 and “tension
member” 1 and cites to Yamamori’s Figure 4. Final Act. 3 (citing
Yamamori, paras. 5, 6, 36, 43; Figs. 4—6). We reproduce Yamamori’s
Figure 4 to illustrate these findings below:
Yamamori describes Figure 4 as depicting pulley 52 and wire rope 1.
Yamamori, para. 36.
With respect to the claimed sheave base being “made from a non-
metallic material” (Appeal Br. 7), the Examiner found that Yamamori is
silent with respect to the material of construction, and relies on Rabe for
satisfying the limitation (Final Act. 4). As with Rejection I, the Examiner
relies on Rabe’s disclosure of sheaves made of extrudable polymeric
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material reinforced by fillers for their high resistance and rigidity, and
reasons that:
It would have been obvious to one of ordinary
skill in the art to modify the reference of Yamamori
with the teaching of Rabe to manufacture the
traction sheave of Yamamori of a non-metallic
material the savings in cost and weight, wherein
savings in cost is attributable to materials of
construction, therein mass production afforded by
extrusion, and facilitated installation, i.e. ease of
replacement by personnel, as well as furthering the
savings in weight attributable to the smaller sheave
diameter afforded by the inventive flat belt of
Yamamori, wherein, further, the surface of the
sheave of Yamamori complements the form of his
flat belt.
Final Act. 4 (emphasis added).
In contesting the rejection, Appellants rely on the same unpersuasive
arguments discussed supra with respect to Rejection I (see Appeal Br. 3,
Reply Br. 2—3) and also argue that the Examiner’s combination is based on
hindsight and would not have yielded a predictable result (Appeal Br. 5).
Appellants’ arguments are not persuasive. As explained similarly
under Rejection I, the Examiner sufficiently articulates its reasoning with
rational underpinnings and Appellants’ conclusory assertions to the contrary
fail to persuade us otherwise.
Accordingly, we adopt the Examiner’s reasoning and findings and
sustain the rejection of claim 51, and claims 54, 59, 62, and 67—70, which
fall with claim 51, under 35 U.S.C. § 103(a), as unpatentable over
Yamamori and Rabe.
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Rejection IV: Claims 67—71 as Unpatentable
over Aulanko and Robe
Appellants contest the rejection of claims 67—71 collectively. See
Appeal Br. 5—6. Accordingly, we select claim 67 as the representative claim
to decide the appeal of the rejection, with claims 68—71 standing or falling
with claim 67.
In rejecting claim 67, the Examiner found that Aulanko discloses the
claimed “car” 1, “counterweight” 2, “flat tension member” 5, and “traction
sheave” 7. See Final Act. 7 (citing in relevant part Aulanko, Figs. 1, 2). To
illustrate these findings, we reproduce Figure 1 of Aulanko below:
As described in Aulanko, Figure 1 discloses elevator car 1, hoisting
rope 5, counterweight 2, diverting pulley 4, and traction sheave 7. Aulanko,
p. 11,11. 3-18.
Claim Cl requires that the sheave base be “made from a non-metallic
material” (Appeal Br. 8), and the Examiner acknowledges that Aulanko is
silent with respect to the material of its sheave base (Final Act. 7). As with
fig. 1
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Rejections I and II, the Examiner relies on Rabe’s disclosure of a sheave
made of extrudable polymeric material, and reasons that:
It would have been obvious to one of ordinary
skill in the art to modify the reference of Aulanko et
al with the teaching of Rabe to manufacture the
traction sheave of Aulanko et al of a non-metallic
material the savings in cost and weight, wherein
savings in cost is attributable to materials of
construction, therein mass production afforded by
extrusion, and facilitated installation, i.e. ease of
replacement by personnel, as well as furthering the
savings in weight attributable to the smaller sheave
diameter afforded by the inventive flat belt of
Aulanko et al[.]
Final Act. 7—8 (citing Aulanko, p. 11,11. 26—34) (emphasis added).
In contesting the rejection, Appellants rely on the same unpersuasive
arguments discussed supra with respect to Rejection I (see Appeal Br. 3,
Reply Br. 2—3) and also argue that the Examiner has impermissibly used
“Appellant’s claims like a roadmap” and that the proposed combination
would not have yielded a predictable result (see Appeal Br. 5—6).
Appellants’ arguments are not persuasive. As explained similarly
with respect to Rejections I and II, the Examiner’s reasoning is sufficiently
articulated with rational underpinnings, and Appellants’ conclusory
assertions otherwise fail to persuade us of error in the rejection.
Accordingly, we adopt the Examiner’s reasoning and findings and
sustain the rejection of claim 67, and claims 68—71, which fall with claim
67, under 35 U.S.C. § 103(a), as unpatentable over Aulanko and Rabe.
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SUMMARY
The Examiner’s decision to reject claims 51—53, 55—57, 59-61, and
63—65 under 35 U.S.C. § 103(a), as unpatentable over Ohta and Rabe, is
affirmed.
The Examiner’s decision to reject claims 51, 54, 59, 62, and 67—70
under 35 U.S.C. § 103(a), as unpatentable over Yamamori and Rabe, is
affirmed.
The Examiner’s decision to reject claims 51—53, 55—57, 59-61, and
63—65 under 35 U.S.C. § 102(b), as anticipated by Rabe, is reversed.
The Examiner’s decision to reject claims 67—71 under 35 U.S.C.
§ 103(a), as unpatentable over Aulanko and Rabe, is affirmed.
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
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