Ex Parte Ericson et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10684171 - (D) (B.P.A.I. Sep. 28, 2010)

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.
10/684,171 10/10/2003 Richard J. Ericson OT-4416A 2595
26584 7590 09/28/2010
OTIS ELEVATOR COMPANY
INTELLECTUAL PROPERTY DEPARTMENT
10 FARM SPRINGS
FARMINGTON, CT 06032
EXAMINER
KRUER, STEFAN
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
09/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD J. ERICSON, HUGH J. O’DONNELL,
ARY O. MELLO, DALE R. BARRETT, and DENNIS J. REHMER
____________________

Appeal 2009-007986
Application 10/684,171
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007986
Application 10/684,171
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
22, 23, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an end connector for an elevator cable.
Claim 22, reproduced below, is illustrative of the claimed subject matter:
22. An elevator system having a tension member for
suspending the elevator loads and a termination device for the
tension member, the termination device including:
a first compressive system to engage and compress the
tension member to provide a first retaining mechanism; and
a second compressive system comprising a clamp
engaging the tension member, the second compressive system
prevents further slippage of the tension member by mechanical
deformation of the tension member only when slippage of the
tension member through the device first occurs.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mardis US 2,189,671 Feb. 6, 1940

REJECTION
Claims 22, 23, 25 and 26 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Mardis. Ans. 3.

OPINION
We have carefully reviewed the rejection on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review, we
Appeal 2009-007986
Application 10/684,171
3
have determined that the applied prior art does not establish the lack of
novelty of claims 22, 23, 25, and 26. Therefore, the rejection of these claims
under 35 U.S.C. § 102 is reversed. Our reasons follow.
The independent claim on appeal requires a first compressive system
and a second compressive system. We agree with the Examiner that Mardis
discloses a first compressive system – plate like members 2 and 6 which
capture the rope 9 therebetween. See page 1, col. 1, l. 44 – page 1, col. 2, l.
19. We also agree that Mardis discloses a second compressive system
comprised of a pair of U-bolts 18. See page 1, col. 2, ll. 36-50. The claim
further requires that the second compressive system prevent further slippage
of the tension member by mechanical deformation of the tension member
were the first compressive system to malfunction.
The Examiner states that this function is inherently provided by the
article of Mardis. See Ans. 3, penultimate sentence. The Appellants argue
that Mardis is unable to perform this function. Appellants base their
argument on a passage from page 2, column 1 of Mardis, lines 12-17 where
Mardis states, “It will also be seen that the rope thimble of this invention is
clamped securely over substantially the entire loop of the rope, thereby
eliminating the danger of any slippage or distortion whatsoever of any of the
strands or that part of the rope looped around the thimble.” See Br. 4.
“To establish inherency, the extrinsic evidence ‘must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference.’” See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Based on the above quoted portion of the Mardis specification, it is our
finding that the Examiner’s determination of inherency is based on
speculation and conjecture. We do not believe that the argued function is
necessarily present in the operation of the Mardis device, since Mardis
Appeal 2009-007986
Application 10/684,171
4
denies slippage can occur, and he intends that no distortion (deformation) of
the strands [of the rope] be permitted. P. 2, col. 1, ll. 14-16. Inasmuch as
Appellants have sustained their burden of showing a claimed feature is not
necessarily present or inherent in the Mardis disclosure, it is our finding that
Mardis does not anticipate the claimed subject matter. Accordingly, we
reverse the 35 U.S.C. § 102 rejection on appeal.

DECISION
The rejection of claims 22, 23, 25, and 26 under 35 U.S.C. § 102 is
reversed.

REVERSED

nlk

OTIS ELEVATOR COMPANY
INTELLECTUAL PROPERTY DEPARTMENT
10 FARM SPRINGS
FARMINGTON CT 06032