Ex Parte Fargo et al

Patent Trial and Appeal Board

Mar 22, 2017

12377202 (P.T.A.B. Mar. 22, 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.
12/377,202 02/11/2009 Richard N. Fargo PA0000673US;60469246PUS1 3646
64779 7590 03/24/2017
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
EXAMINER
RIEGELMAN, MICHAEL A
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
03/24/2017 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 N. FARGO, and ALICIA HAYTER
Appeal 2015-005376
Application 12/377,202
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard N. Fargo and Alicia Hayter (“Appellants”)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 19—30.
See Appeal Br. 2. Claims 31—35 have been withdrawn. See id. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Otis Elevator
Company. Appeal Br. 1.
Appeal 2015-005376
Application 12/377,202
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to elevator systems.” Spec.,
p. 1,1. 4. Claim 19, reproduced below, is the sole independent claim and is
representative of the subject matter on appeal.
19. An elevator belt installation assembly comprising:
a first member;
a housing securable to the first member;
a second member supported within the housing and
movable relative to the first member; and
a biasing member supported within the housing and
providing a biasing force for securing a portion of an elevator
belt between the first member and the second member.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Holinshead US 2,865,591 Dec. 23, 1958
Weber US 5,689,865 Nov. 25, 1997
Ericson US 6,820,726 B1 Nov. 23, 2004
REJECTIONS
The following rejections are before us for review:
I. Claims 19-26 and 28—30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Holinshead and Ericson.
Final Act. 2—6.
II. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holinshead, Ericson, and Weber. Id. at 6.
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Application 12/377,202
ANALYSIS
Rejection I— Claims 19—26 and 28—30 as unpatentable
over Holinshead and Ericson
Appellants present arguments against the rejection of independent
claim 19 (see Appeal Br. 3—5; Reply Br. 1—4), and present additional
argument against the rejection of dependent claim 26 (see Appeal Br. 6;
Reply Br. 4—5). We select independent claim 19 as representative of the
issues that Appellants present together, with claims 20-25 and 28—30
standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). We address
the additional arguments directed to dependent claim 26 infra.
Claims 19—25 and 28—30
The Examiner found that
Holinshead discloses a belt installation assembly comprising a
first member (H), a housing (B,[ ]E, and F) securable to the first
member (H); a second member (K) supported within the housing
(B,[ ]E, F) and movable relative to the first member (H); and a
biasing member (A) supported within the housing (B,[ ]E, and F)
and providing a biasing force for securing a portion of a belt (P)
between the first member (H) and the second member (K).
Final Act. 2—3. The Examiner acknowledged that Holinshead does not
disclose an elevator belt, but found that Ericson discloses “a similar
[clamping] device for an elevator belt (22).” Id. at 3. The Examiner
concluded that, given the teachings of the prior art, it would have been
obvious to one of ordinary skill in the art at the time of the invention “to
provide the elevator belt described by Ericson ... to the system disclosed by
Holinshead in order to clamp on[e] end of an elevator belt.” Id. at 3^4.
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Application 12/377,202
Appellants argue that “[t]he proposed combination would destroy the
intended operation of the base reference (Holinshead).” Appeal Br. 3; Reply
Br. 1. In particular, Appellants assert that “[t]he Examiner proposes to
modify the Holinshead reference in view of the Ericson end termination
device (Figures 9 and 10 shown on the left above) to provide a clamp that
secures an elevator belt.” Appeal Br. 4; Reply Br. 2. According to
Appellants, “[s]uch a modification would not allow the regulation of flow of
liquid as is required by the Holinshead hose clamp.” Appeal Br. 4; see also
id. (Appellants asserting that “Holinshead specifically discloses that the
intended purpose and operation of the present invention is directed toward a
hose clamp utilized to regulate the flow of liquid therethrough”).
We are not persuaded by Appellants’ argument because it is not
responsive to the rejection presented. Namely, the Examiner did not propose
any modification of Holinshead’s clamp structure. Instead, the Examiner
simply proposed using Holinshead’s clamp to secure an elevator belt.2 As
the Examiner further explains, the “claim defines a device - the intended use
of this device is to hold an elevator belt,” and “[t]he hose clamp of
Holinshead is capable of providing a biasing force to an elevator belt.”
Ans. 2; see In re Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997);
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) (“apparatus claims cover what a device is, not what a device
does”). In this regard, Appellants do not specifically address or identify
error in the Examiner’s position that “[t]he hose clamp of Holinshead is
2 The Examiner explained that “the fact that the clamp is applied to
fixing one end of a belt in an elevator is intended use and does not hold
patentable weight.” Final Act. 4.
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Application 12/377,202
capable of providing a biasing force to an elevator belt” (Ans. 2), and that
“one having ordinary skill in the clamp art could readily apply the structure
of Holinshead to a belt clamping application” {id. at 3). Specifically,
Appellants do not set forth factual evidence or persuasive technical
reasoning to explain why Holinshead’s clamping device would not be
capable of securing an elevator belt.
Appellants argue that “the proposed modification to include biasing
members in the Holinshead hose clamp device would further destroy an
intended operation.” Appeal Br. 4; see Reply Br. 3. In particular,
Appellants assert that “[t]he addition of biasing members about. . . screw A
would block movement of the spring members and thereby not provide the
desired movement of. . . screw A through . . . spring member C.” Appeal
Br. 5; Reply Br. 4. This argument is not persuasive of error because it is not
responsive to the rejection of claim 19. Namely, the Examiner did not
propose modifying Holinshead’s clamping device to include additional
biasing members, nor does claim 19 require multiple biasing members. See
Final Act. 2-4. As discussed supra, the Examiner found that Holinshead
discloses a biasing member, as recited in the claim, but does not disclose an
elevator belt. See id. at 3. The Examiner proposed using the clamp of
Holinshead to secure an elevator belt as disclosed by Ericson. See id.;
Ans. 2—3.
After careful consideration of all the evidence, Appellants’ arguments
do not apprise us of error in the Examiner’s findings or reasoning for the
conclusion of obviousness with respect to claim 19. Accordingly, we sustain
the rejection of claim 19, and of claims 20-25 and 28—30, falling therewith,
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Application 12/377,202
under 35 U.S.C. § 103(a) as being unpatentable over Holinshead and
Ericson.
Claim 26
In the rejection of claim 26, the Examiner found that
Holinshead in view of Ericson . . . discloses the assembly as
recited in claim 19, including a guide member (A — see
explanation in rejection of claim 22) attached to the second
member (K) and extending through [a] plurality of biasing
members (102) and through an opening in the housing for
providing a visual indication of a position of the second
member (K).
Final Act. 5; see also id. at 4 (the Examiner concluding that it would have
been obvious to place Ericson’s washers 102 around Holinshead’s screw A
“in order to strengthen the clamp”). The Examiner explained that a plurality
of washers “102 would serve as the biasing member and [screw] A would
serve as a guide member.” Id. at 4 (emphasis omitted).
Appellants initially rely on the same arguments set forth with respect
to independent claim 19, from which claim 26 depends. See Appeal Br. 6.
For the same reasons that Appellants’ arguments do not apprise us of error in
the rejection of claim 19, these arguments likewise do not apprise us of error
in the rejection of claim 26.
Appellants additionally argue that “[t]he use of biasing members as
proposed by the Examiner in Holinshead would provide no benefit and also
would destroy an intended operation of the Holinshead device.” Appeal
Br. 6. Appellants assert that the “addition of biasing members about the
screw A in the Holinshead device would block movement of the spring
members and thereby not provide the desired movement of the screw A
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Application 12/377,202
through the spring member C.” Id. According to Appellants, “biasing
members provided as proposed by the Examiner would override the purpose
and operation of the Holinshead threaded member A and destroy how
Holinshead is intended to operate.” Reply Br. 5.
We are not persuaded by Appellants’ argument. To the extent that
adding Belleville washers 102 around Holinshead’s screw A may increase
the force required to move spring nut member C, or make it more difficult to
close the clamping device around an elevator belt, Appellants do not provide
factual evidence or persuasive technical reasoning to explain why the
proposed combination would destroy the principle of operation of the device
or yield anything other than a result that would have been predictable to one
of ordinary skill in the art. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). The Examiner explains that, in the proposed combination,
“screw A[] deflects spring nut member C, spring nut member C will deflect
downward,” and “[t]his downward deflection would apply a force onto the
biasing member[s] in a complementary direction.” Ans. 4. In this regard,
Appellants do not specifically address or identity error in the Examiner’s
position.
Accordingly, we sustain the rejection of claim 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Holinshead and Ericson.
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Rejection II— Claim 27 as unpatentable
over Holinshead, Ericson, and Weber
In the rejection of claim 27, the Examiner found that “Weber teaches
a clamping device with a knurled surface (36).” Final Act. 6. The Examiner
concluded that, given the teachings of the prior art, it would have been
obvious “to provide the knurled surface (36) described by Weber to the
system disclosed by Holinshead in view of Ericson ... in order to help
prevent belt slippage.” Id.
Appellants argue that Weber teaches away from the Examiner’s
proposed modification of Holinshead’s clamping device. See Appeal Br. 7;
Reply Br. 5—6. In particular, Appellants assert that Weber’s “serrated
edges 36 would not be combined with a hose clamp as they would
potentially puncture a hose causing leakage.” Appeal Br. 7; see also Reply
Br. 6 (asserting that “each of the serrated edges 36 includes a sharp point
that would damage a hose”). This argument is not persuasive of error
because it does not point out why a person of ordinary skill, upon reading
the reference, would be led in a direction divergent from the path taken by
Appellants. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants
do not identify, nor do we discern, any passage in Weber that criticizes,
discredits, or otherwise discourages the combination of teachings proposed
by the Examiner. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(prior art does not teach away from claimed subject matter merely by
disclosing a different solution unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed). In particular, Appellants do not
identify any disclosure in Weber that serrations 36 would cut or cause
damage to a hose or elevator belt.
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Application 12/377,202
Additionally, Appellants do not specifically address or identify fault
in the Examiner’s reasoning articulated in support of the conclusion of
obviousness. See Final Act. 6 (explaining that the proposed modification of
the clamping device of Holinshead and Ericson to include serrations 36
would “help prevent belt slippage”). The Examiner’s reasoning has support
in Weber, which discloses that “second outer plate 20 can include
serrations 36 along one or more of its outer edges, to help grip an object that
is inserted between the pressure plate and the first outer plate.” Weber,
col. 3,11. 32—34 (boldface omitted; emphasis added).3
For these reasons, Appellants do not apprise us of error in the
Examiner’s findings or reasoning for the conclusion of obviousness with
respect to claim 27. Accordingly, we sustain the rejection of claim 27 under
35 U.S.C. § 103(a) as being unpatentable over Holinshead, Ericson, and
Weber.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 19—26 and
28—30 under 35 U.S.C. § 103(a) as being unpatentable over Holinshead and
Ericson.
We AFFIRM the Examiner’s decision rejecting claim 27 under
35 U.S.C. § 103(a) as being unpatentable over Holinshead, Ericson, and
Weber.
3 We note that this disclosure in Weber is also consistent with
Appellants’ Specification, which describes using “a knurled surface to
increase friction between the belt 20 and the clamping plate 36.” Spec.,
p. 4,11. 11—12 (emphasis added).
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Application 12/377,202
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
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