Ex Parte Hubbard et al

Patent Trial and Appeal Board

Aug 7, 2018

14351349 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/351,349 04/11/2014
87423 7590 08/09/2018
Cantor Colburn LLP - Otis Elevator
INTELLECTUAL PROPERTY DEPARTMENT
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
James L. Hubbard
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.
PA-0018344-US 2256
EXAMINER
MANSEN, MICHAEL R
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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):
usptopatentmail @cantorcolburn.com
frederic.tenney@otis.com
frederic.tenney@otis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES L. HUBBARD and RICHARD N. FARGO
Appeal2017-008879
Application 14/3 51,349
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
James L. Hubbard and Richard N. Fargo ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action
(dated Mar. 22, 2016, hereinafter "Final Act.") rejecting claims 1-5, 7-9,
and 14--19. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Otis Elevator Company is identified as the real party in interest in
Appellants' Appeal Brief (filed July 25, 2016, hereinafter "Br."). Br. 1.
2 Claims 6, 10-13, and 20 are canceled. Br. 1.
Appeal2017-008879
Application 14/3 51,349
INVENTION
Appellants' invention "relates to guide rails for an elevator system."
Spec. para. 1.
Claims 1 and 14 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method of making a guide rail for an elevator system,
the method comprising:
providing a sheet metal guide rail having a base portion
and a blade portion;
obtaining a protective layer, the protective layer being a
removable protective layer for corrosion protection, the
removable protective layer being a peelable film, the peelable
film being perforated to define a removable section; and
applying the protective layer to the guide rail such that
the removable section is positioned on the blade portion.
REJECTIONS
I. The Examiner rejects claim 9 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejects claims 1-5, 7-9, and 14--17 under 35 U.S.C.
§ I03(a) as being unpatentable over JP 55-061583 (pub. May 9, 1980,
hereinafter "JP 61583"), Fargo (US 2008/0210495 Al, pub. Sept. 4,
2008), and Burgoon (US 2009/0202773 Al, pub. Aug. 13, 2009).
nr. The Examiner rejects claims 18 and 19 under 35 U.S.C. § I03(a) as
being unpatentable over JP 61583, Fargo, Burgoon, and Rivera et al.
(WO 2011/146071 Al, pub. Nov. 24, 2011, hereinafter "Rivera").
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Application 14/3 51,349
ANALYSIS
Rejection I
Appellants do not make any arguments in regards to the indefiniteness
rejection. See Br. 2-7. Accordingly, Appellants have waived any argument
of error, and, thus, we summarily sustain the rejection of claim 9 under 35
U.S.C. § 112, second paragraph, as being indefinite. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance
without consideration of the substantive merits is appropriate where an
Appellant fails to contest a ground of rejection).
Rejection II
Claims 1-5 and 7-9
Appellants have not presented arguments for the patentability of
claims 2-5 and 7-9 apart from claim 1. Therefore, in accordance with 37
C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claims 2-5 and 7-9
standing or falling with claim 1.
The Examiner finds that JP 61583 discloses a sheet metal guide 1 for
an elevator car 2 including, inter alia, a base portion 6 and a blade portion 4
for engaging guide shoe 3 that slides along blade 4. Final Act. 3; see also
JP 61583, Figs. 1, 3. The Examiner further finds that "JP 61583 is silent
with respect to at least a portion of the guide rail ... [having] a removable
protective layer thereon for corrosion protection." Id. at 4. Nonetheless, the
Examiner finds that Fargo discloses placing a peelable, removable protective
layer 50 on a blade portion 40 of guide rail 30 for protection against
corrosion during storage and shipping and, moreover, to prevent blade
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portion 40 from being painted. Id. ( citing Fargo, Abstract, paras. 20, 24,
Figs. 2, 3). Thus, the Examiner determines that
It would have been obvious to one of ordinary skill in the art at
the time that the instant invention was made to place a peelable
film as taught by Fargo on the guide rail of JP61582 to protect
the guide and braking surfaces against corrosion and abrasion,
therein the nose or blade portion of the guide rail, during
shipping and storage, as well as during subsequent painting of
the guide rail flanges during installation, for quality assurance
and savings in repairs and cleanup post painting in the field.
Id. The Examiner further finds that JP 615 83, as modified by "Fargo is
silent with respect to ... [the] peelable film being perforated." Id.
However, the Examiner finds that Burgoon discloses a tape 10 having
perforations 12 for protecting a surface from being painted. Id. at 4--5
(citing Burgoon, paras. 5, 50-54, Figs. 5, 7, and 8). As such, the Examiner
determines that
It would have been obvious to one of ordinary skill in the art at
the time that the instant invention was made to provide the
peelable film of JP61582 and Fargo with perforations to
facilitate removal of the peelable film by sections as taught by
Burgoon, thereby assure that the film is properly removed
without inadvertent portions of the film remaining on the nose
or blade portion of the guide rail and/or assure removal of a
sections that protect the flanges, for instance, of the guide rail
for subsequent painting of the flanges while leaving the
section(s) of the peelable film protecting the nose or blade
portion of the guide rail in place to insure that said nose and
guide portion remains free of contamination/paint.
Id. at 5.
Appellants argue that because Burgoon' s perforated tape 10 is
designed to allow two adjacent surfaces be painted and Fargo only paints
base portion 30 of guide rail 24, but does not paint blade portion 40, "it is
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Application 14/3 51,349
not clear why one would use the painters tape of Burgoon with Fargo."
Br. 4--5. According to Appellants, "[a]s the removable film 50 [of Fargo] is
applied to only the guide surfaces 40, there is no need for a perforated
section in Fargo." Id. at 4. Moreover, Appellants note that in contrast to the
tape 10 of Burgoon and protective layer 50 of Fargo, which are fully
removed, in claim 1, "at least some portion of the removable protective layer
will remain on the guide rail." Id. at 4--5.
We are not persuaded by Appellants' arguments because a proposed
combination of teachings does not necessarily require that the structure
taught by one of the references be bodily incorporated into the structure of
another reference. See In re Nievelt, 482 F .2d 965, 968 (CCP A 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures."). In this case, we agree with the
Examiner that the rejection does not use Burgoon's tape 10, but rather
provides the perforations 12 of Burgoon's tape 10 to the peelable film of
JP 61583, as modified by Fargo, in order to "define a removable section of
the peelable film." Examiner's Answer 5---6 (entered Dec. 14, 2016,
hereinafter "Ans."). We further agree with the Examiner's finding that
"Fargo's peelable film can be applied as a single sheet to the blade portion
[ 40]." Id. at 4; see also Fargo, para. 23.
Hence, the Examiner is correct in that the pee lab le film of JP 615 83,
as modified by Fargo and Burgoon, allows proper removal of the film from
all sides of blade portion 4 of JP 61583's sheet metal guide 1 (guide rail).
Ans. 5; see also Final Act. 5. In other words, the Examiner's modification is
an improvement to Fargo's single sheet of peelable film, to provide
perforations 12 in the same way as taught by Burgoon, to lead to a
predictable result of having removable sections, and the modification is well
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Application 14/3 51,349
within the skill of a person having ordinary skill in this art. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill."). We also
agree with the Examiner's position that the peelable film of JP 61583, as
modified by Fargo and Burgoon, allows removal of the film from base
section 6 of JP 61583 's sheet metal guide 1 (guide rail) for subsequent
painting, while leaving the peelable film on blade portion 4 to protect it from
painting. Ans. 5; see also Final Act. 5. Appellants do not persuasively show
error in the Examiner's findings and reasoning.
Accordingly, for the foregoing reasons we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over JP 61583, Fargo, and
Burgoon. Claims 2-5 and 7-9 fall with claim 1.
Claims 14-17
Appellants make the same arguments discussed supra. See Br. 5-7.
Therefore, for the same reasons discussed above, we likewise sustain the
rejection of claims 14--17 over the combined teachings of JP 61583, Fargo,
and Burgoon.
Rejection III
Appellants rely on the arguments discussed supra. See Br. 7 ("Claims
18 and 19 are patentable by virtue of dependency on claim 14.").
Accordingly, for the same reasons, we also sustain the rejection under 35
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Application 14/3 51,349
U.S.C. § 103(a) of claims 18 and 19 as unpatentable over JP 61583, Fargo,
Burgoon, and Rivera.
SUMMARY
The Examiner's decision to reject claim 9 under 35 U.S.C. § 112,
second paragraph, as indefinite is affirmed.
The Examiner's decision to reject claims 1-5, 7-9, and 14--17 under
35 U.S.C. § 103(a) as unpatentable over JP 61583, Fargo, and Burgoon is
affirmed.
The Examiner's decision to reject claims 18 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over JP 61583, Fargo, Burgoon, and Rivera 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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