Ex Parte Dold et al

Patent Trial and Appeal Board

Oct 28, 2016

11459138 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111459, 138 07/21/2006
43935 7590 11/01/2016
FRASER CLEMENS MARTIN & MILLER LLC
28366 KENSINGTON LANE
PERRYSBURG, OH 43551
Florian Dold
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1-17285 9875
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
clemens@fraser-ip.com
lopez@fraser-ip.com
howard@fraser-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN DOLD, ADOLF BISSIG,
MANFRED WIRTH, ERNST ACH, and
CLAUDIO DEANGELIS
Appeal2015-000677
Application 11/459,138
Technology Center 3600
Before: LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
44, 45, 50, 51, 53-55, 57-59, 64, 65, and 67-70 under 35 U.S.C. §103(a) as
unpatentable over Ericson, Parrini, De Josez, and De Angelis. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-000677
Application 11/459,138
CLAIMED SUBJECT MATTER
The claims are directed to an elevator installation. Claims 44 and 57,
reproduced below, are illustrative of the claimed subject matter:
44. An elevator installation comprising:
a support for supporting a car and a counterweight, said
support having a cable or cable strand and a cable casing, said
cable casing being formed of substantially thermoplastic or
elastomeric material and said cable or cable strand being
enclosed by said cable casing; and
a fastening device for fastening an end of said support to
the car, the counterweight or an elevator shaft, said fastening
device including a wedge housing with a wedge pocket and a
wedge,
said support extending between said wedge and said
wedge pocket, looping substantially around said wedge and
being held by said wedge in said wedge pocket, wherein a
longitudinal wedge groove is formed in one of said wedge and
said wedge pocket and a portion of said support is clamped in
said longitudinal wedge groove, said longitudinal wedge groove
extending along a path of the looping of said support
substantially around said wedge and said longitudinal wedge
groove having a width transverse to the path of looping less than
a width of said support transverse to the path of looping.
57. An elevator installation comprising:
a support for supporting a car and a counterweight, said
support including a cable or cable strand and a cable casing, said
cable casing being formed of substantially thermoplastic or
elastomeric material and said cable or said cable strand being
enclosed by said cable casing; and
a fastening device for fastening an end of said support to
the car, the counterweight or an elevator shaft, said fastening
device including a wedge housing with a wedge pocket and a
wedge, and
a portion of said support extending between said wedge
and said wedge pocket, looping substantially around said wedge
and being held by said wedge in said wedge pocket by a friction
force resulting from a friction coefficient present in a region of
2
Appeal2015-000677
Application 11/459,138
said wedge and a region of said wedge pocket in cooperation
with a contacting region of said cable casing,
wherein at least one of the region of said wedge, the region
of said wedge pocket, and the region of said cable casing is
provided with a surface having a reduced coefficient of friction
relative to a coefficient of friction of another surface of said
region of said wedge, said wedge pocket, or said cable casing
respectively.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ericson
De Josez
De Angelis
Parrini
Claims 44, 53, and 55
US 6,357,085 B2
US 6,412,264 Bl
US 2001/0030608 Al
US 2004/0110441 Al
OPINION
Mar. 19,2002
July 2, 2002
Oct. 18, 2001
June 10, 2004
The Examiner finds that Ericson teaches the majority of features of
independent claim 44. Answer 2--4. The Examiner further finds that "it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to modify the Ericson transverse/horizontally
striated/grooved wedge to be longitudinally/vertically striated/grooved to
better accept a vertically striated/grooved support/cable/belt such as that
taught by Parrini's figures 3 and/or 4." Id. at 3.
Appellants argue that "[t]he cited combination of Ericson and Panini
fails to teach or remotely suggest a wedge of an elevator installation with a
'longitudinal wedge groove,' as recited in independent Claim 44." Appeal
Br. 11. Rather, Appellants argue, the combination "would result in the
3
Appeal2015-000677
Application 11/459,138
Parrini poly-V belt looped around the Ericson wedge, with the flat side of
the poly-V belt being disposed against the striations as taught by the
normally flat tension members or belts of Ericson." Id.
Appellants also argue "that anyone looking to Parrini for a substitute
belt would naturally select the cogged belt shown in FIG. 2 of Parrini, as
opposed to the poly-V belt in FIG. 3, since the ribs are oriented in the same
direction as the Ericson striations (83)." Id. at 15.
The Examiner responds:
one of ordinary skill would have easily recognized that the
Ericson figure 7 transverse/horizontal striations must be
modified to be longitudinal/vertical in order to work with the old
and well known belt/cable/support of Parrini's figure 2 (and or
figure 3). Appellant' (sic) implication that one would not know
to modify Ericson as such in order to use the Parrini figure 3 (and
4) longitudinal/vertical striation style belts, but must rather be
satisfied solely with the Parrini figure 2 transverse/horizontal
striation style belt would presume a vastly lower than ordinary
skill in the art. This particular "longitudinal" claim limitation
does nothing more than what one of ordinary skill would be
required to do to Ericson in order to accept the Parrini figure 3
(or figure 4) belt over the Parrini figure 2 belt.
Answer 13-14.
Appellants respond that "modification of the wedge-based fastening
devices to account for poly-V belts is unnecessary" and that "combining of
the poly-V belts of Parrini with the wedge-based fastening device of Ericson
does not necessarily result in Ericson also being modified to have
longitudinal grooves in either the wedge or wedge pocket." Reply Br. 5---6.
Appellant's argument that one skilled in the art would select Parrini' s
cogged belt, rather than its poly-V belt presumes little or no skill on the part
of one skilled in the art, and thus, is not well taken. The Supreme Court
4
Appeal2015-000677
Application 11/459,138
instructs us that "a person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
Appellants' arguments are further unconvincing as they do not
demonstrate why the Examiner's reasoning is incorrect (i.e. why it would
not be obvious to modify Ericson to "better accept" the poly-V belts of
Parrini). Rather than address the Examiner's reasoning, Appellants'
arguments envision different situations, such as what would happen with
Parrini' s cogged belt. Further, Appellants' statement that the flat side of the
poly-V belt would be disposed against the striations does not address the fact
that Ericson teaches that both sides, the wedge and the jaws (i.e. wedge
pocket) have a roughened surface/striations. As the claim requires that the
longitudinal groove be on either the wedge or wedge pocket this argument
does not differentiate the prior art from the claim. Appellants' arguments
that a different style belt would be preferred and that it is not necessary to
change the wedge of Ericson does not show why the modification would not
be obvious in view of the findings of the Examiner as laid out in the
rejection.
Appellants next discuss channel 88 of Erikson and grooves in sheaves
and pulleys. Appeal Br. 11-12. Both of these arguments deal with topics or
points not relied on by the Examiner in the rejection. Thus, they do not
inform us of error in the rejection.
Continuing on page 12-13 of the Appeal Brief, Appellants argue that
the proposed modification would "remove [the] transverse locking features"
and would no longer have the advantages of the "locking features" which
5
Appeal2015-000677
Application 11/459,138
would render "the Ericson locking device ... unsatisfactory for its intended
purposes." It is unclear why this would be the case.
In particular, the rejection does not call for the removal of the
"locking features" but merely a change of orientation from the illustrated
embodiment of Ericson Figure 7. The locking features of Ericson are not
limited to the transverse orientation. Ericson states "that the locking features
may comprise grooves, striations 83 (FIG. 7), cuts, diamond pattern, or other
suitable equivalents." Ericson, col 6:7-9. Thus, the proposed modification
would appear to be consistent with the teachings of Ericson, which states
that the locking features can be grooves without any mention of the
orientation of the grooves.
Appellants further argue that "'longitudinal grooves' recited in
independent Claim 44 are not among the various etching, knurling,
transverse striations, diamond patterns, etc. described by Ericson" as ways of
roughening the surface. Reply Br. 4. But as mentioned previously, Ericson
specifically mentions grooves as an example of locking features or "ways of
roughening the surface." Thus, Appellants' argument is unconvincing.
Appellants then argue that the Examiner made an unsupported finding
of inherency. Appeal Br. 13-14. Appellants focus on the single channel 88
of Ericson and argue that the Examiner must be considering the channel 88
to be the claimed longitudinal grooves. Id. at 14. It is argued that this
channel does not have the claimed "width transverse to the path of looping
less than a width of said support transverse to the path of looping" and thus
such a feature would not be inherent in Ericson. Id. However, the rejection
does not rely on inherency or channel 88 to meet the limitation at issue.
Answer 2. Thus, this argument does not inform us of error in the rejection.
6
Appeal2015-000677
Application 11/459,138
Finally, Appellants argue that the rejection is based on impermissible
hindsight. Id. at 15. But, rather than provide additional argument,
Appellants simply list the issues discussed supra. As these issues have been
addressed above this argument does not inform us of error in the rejection of
claim 44.
For these same reasons, we sustain the rejection of claims 53 and 55
which depend from claim 44 and are not separately argued. See 37 C.F.R.
§ 41.37(c)(l)(vii).
Claim 45
Claim 45 depends from claim 44 and adds "wherein said support has a
loose run and a supporting run and said longitudinal wedge groove is formed
in one of a wedge adhesion surface and a wedge pocket adhesion surface
disposed closer to said loose run." The Examiner relies on Ericson to teach
the features of claim 45. Answer 5.
Appellants argue that the limitations of claim 45 are not addressed by
that Examiner, no rationale is provided for the rejection, and "a teaching of a
placement of a longitudinal wedge groove closer to the loose run than the
supporting run is not apparent in ... Ericson." Appeal Br. 16.
The Examiner responds that Ericson teaches "support (22) [] has a
loose run (48) and a supporting run (44) and said longitudinal wedge groove
is formed in a wedge adhesion surface (left surface of wedge 32 contacting
loose run 48) disposed closer to said loose run." Answer 19.
Appellants do not respond to the Examiner's further explanation of
how Ericson teaches the features of claim 45. Appellants also do not
identify any errors in the Examiner's reasoning or point to any missing
7
Appeal2015-000677
Application 11/459,138
elements from claim 45 in the identified teachings of Ericson. Thus, we are
not apprised of error in the rejection.
Claims 57, 67, 69, and 70
In rejecting independent claim 57, the Examiner relies on similar
teachings of Ericson and Panini and the same rationale for combining them
as in claim 44. Answer 7. Additionally, the Examiner relies on Ericson's
teaching that "the wedge is made of smooth steel and the casing is made of
urethane coating that is elastomeric" for the "additional 'friction'
limitations" of the claim. Id.
The Examiner also offers an alternative reasoning for the "friction
limitations" stating: "[a]lternatively, the examiner has previously taken
official notice that it was extremely well known to be desirable to spray
elevator cables with lubricant for the purpose of reducing friction wear and
corrosion thereby increasing cable life." Id. at 8.
In both the Appeal Brief and Reply Brief Appellants argue that
"Claim 57 does not recite an elevator cable sprayed with a 'lubricant."'
Appeal Br. 18; Reply Br. 9. Appellants' arguments surrounding claim 57
focus exclusively on the Examiner's alternative reasoning and do not
address the main grounds of rejection which relies upon Ericson's disclosure
of urethane coating to meet the friction limitations (Answer 7). See Appeal
Br. 16-18; see also Reply Br. 9. Thus, we are not apprised of error in the
rejection of claim 57.
Because we are not apprised of error in the Examiner's main
reasoning rejecting claim 57 it is unnecessary for us to consider the merits of
the Examiner's alternative reasoning.
8
Appeal2015-000677
Application 11/459,138
Claims 67, 69, and 70 depend from claim 57 and are not separately
argued. Thus, claims 67, 69, and 70 fall with claim 57. See 37 C.F.R.
§ 41.37( c )(1 )(vii).
Claims 5 0, 51, 64, and 65
Claims 50 and 64 depend from independent claims 44 and 57,
respectively, and add "wherein said wedge is formed of a material which is
soft by comparison with steel." Claims 51 and 65 depend from claims 50
and 64, respectively, and add "wherein said wedge material is one of
aluminum, synthetic material and a compound of metal and synthetic
material."
The Examiner "take[ s] official notice that aluminum was known to be
very desirable for its low weight" and "[t]he resulting aluminum wedge
would inherently be softer by comparison with steel." Answer 5---6; see also
id. at 10.
Appellants do not challenge the Examiner finding, but instead respond
that the relative softness of the wedge material is critical. Appeal Br. 19.
Appellants cite to the Specification which states:
The use of a soft material [for the wedge] produces an evening
out of pressure points and correspondingly preserves the support
means. In the case of use of a metal and synthetic material
composite the possibility is additionally offered of realizing
special sliding characteristics. With use of materials with a low
modulus of elasticity the jump in stiffness between the wedge or
the housing and the support means can be reduced, which results
in an enhanced supporting force.
Id. (citing Specification p. 7, 11. 13-18).
But, this purported evidence of criticality does not have the same
scope as the claims. The portion of the Specification cited by Appellants
9
Appeal2015-000677
Application 11/459,138
discusses the relative softness of the wedge as compared to the support
means ("the jump in stiffness"), implying that the support means is made of
a stiffer or harder material. This difference in materials is not claimed.
Thus, the scope of the claims and the scope of the cited benefit are not
consistent. For this reason we are not informed of error in the rejection of
claims 50, 51, 64, and 65.
Claims 54 and 68
Claims 54 and 68 depend from claims 44 and 57, respectively, and
add "wherein an end of said support is divided into individual cable runs or
cable strand runs and each said run is clamped by an associated longitudinal
wedge groove formed in one of said wedge and said wedge pocket."
The Examiner finds that the term "divided" in claims 54 and 68 is not
limited to "'cutting or tearing'" and rejects the claims on two alternative
grounds. Answer 6-7, 11, and 22. First, claims 54 and 68 are rejected over
Ericson where the claimed individual cable runs are found to be "loose run
48 and supporting run 44," each run being clamped in the wedge. Id. at 6
and 11.
In the alternative, the Examiner finds "that an end of said support (22)
[of Ericson] is divided into individual [cable runs or] cable strand runs"
because Ericson's cords "are described as being embedded in a coating to
form the support cable 22." Id. at 6-7 and 11 (citing Ericson, 1:62-2:10).
The Examiner further finds that in view of Parrini "each [of] said run is
clamped by an associated longitudinal wedge groove." Id. at 7 and 11. The
Examiner also finds that "a 'cable or cable strand' can comprise more than a
single cord in accordance with appellant's own figures 5 and 6." Id.
10
Appeal2015-000677
Application 11/459,138
Appellants argue that "the cited combination ... does not teach or
fairly suggest dividing an end of a support or belt into individual cable runs
or cable strand runs, which in tum are each clamped into their respective
longitudinal wedge grooves." Appeal Br. 20. Appellants also reproduce
Figures 8 and 8a as examples of the claimed limitation and cite certain
advantages listed in the Specification. Id. Other than providing examples of
the claimed limitation, Appellants do not provide or argue for a particular
definition of the claim terms. Appellants also do not contest the Examiner's
finding that the term "divided" is not limited to "cutting or tearing." This
finding appears consistent with Appellants' Specification that states "[t]he
division of the support means into individual cable runs or individual cable
strand runs can be carried out manually, for example by cutting or tearing, or
it can be constrainedly effected." Specification p. 8, 11. 8-10 (emphasis
added).
Appellants then discuss each of the cited references individually, but
do not address the combination of teachings relied upon in the rejection.
One cannot show nonobviousness by attacking references individually
where the rejection is based on the combination of references. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For these reasons we are not informed of error in the Examiner's
rejection of claims 54 and 68.
Claims 58 and 59
Claims 58 and 59 both depend from claim 57 and are argued together.
We select claim 58 as representative. Claim 58 adds: "said support has a
loose run and a supporting run and at least one of a wedge adhesion surface
11
Appeal2015-000677
Application 11/459,138
and a wedge pocket adhesion surface disposed closer to said loose run of
said support has a surface roughness increased relative to a rest of a surface
of said wedge pocket."
The Examiner finds that Ericson teaches "roughening the wedge and
jaw/pocket surfaces that contact the support (22) for the purpose of
specifically increasing friction with the support (22)" and that it "would have
been obvious to roughen only those surfaces of the wedge and/or jaw/pocket
that actually contact the support and leave those surfaces that do not contact
the support ... smooth and unroughed for the purpose of reducing the
amount of roughening work/ cost/time." Answer 9.
Appellants respond that the relative surface roughness is critical.
Appeal Br. 22. Appellants cite to the specification which states:
This is an advantage, since in the case of loading of the support
means the pressing force, which arises through drawing-in of the
wedge, of the wedge on the wedge pocket increases to particular
extent the possible supporting force in the support means on the
side of the wedge pocket adhesion surface or wedge adhesion
surface, since this surface has an increased roughness or has
transverse flutes or transverse grooves, whereby the maximum
possible support means force increases as a consequence of the
deflection around the wedge. The force is in that case
continuously increased, since the initial force on the side of the
loose run is built up. The loose run of the support cable is
securely held and a high supporting force can be transmitted.
Moreover, the wedge pocket sliding surface on which the support
means slides mainly during the loading process is formed with
an appropriately lesser degree of roughness, which counteracts
damage of the support means, since the surface thereof is not
harmed. An economic support means end connection with a high
load-bearing capability can be provided by means of this
invention.
Id. (quoting Specification p. 5, 11. 12-25).
12
Appeal2015-000677
Application 11/459,138
But, this purported evidence of criticality does not have the same
scope as the claims. The cited portion of the Specification discusses the
relative roughness of a portion of the wedge or wedge pocket as compared to
another portion of the wedge or wedge pocket where both portions contact
the support. The claimed relative roughness does not require contact with
the support. Thus, the scope of the claims and the scope of the cited benefit
are not consistent. For this reason we are not informed of error in the
rejection of claim 58. For this same reason we are not informed of error in
the rejection of claim 59.
DECISION
The Examiner's rejection of claims 44, 45, 50, 51, 53-55, 57-59, 64,
65, and 67-70 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
13