James L. Hubbard et al.

Patent Trials and Appeals Board

Jul 1, 2020

2018008384 (P.T.A.B. Jul. 1, 2020)

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.
14/413,484 01/08/2015 James L. Hubbard 60469-564PUS1;
59442US01
8049
64779 7590 07/01/2020
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
cgolaw@yahoo.com
frederic.tenney@otis.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JAMES L. HUBBARD, BRAD GUILANI,
DARYL J. MARVIN, and ZBIGNIEW PIECH
____________________

Appeal 2018-008384
Application 14/413,484
Technology Center 3600
____________________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision (dated January 10, 2018, hereinafter “Non-Final Act.”) rejecting
claims 1–11 and 20 under 35 U.S.C. § 103(a) as unpatentable over Fargo
(WO 2011/146071 A1, pub. Nov. 24, 2011), Resch (US 2006/0199017 A1,
pub. Sept. 7, 2006), and Miller (US 2007/0107993 A1, pub. May 17, 2007).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Otis Elevator Company as the real
party in interest. Appeal Br. 1.
2 In the Answer (dated June 14, 2018, hereinafter “Ans.”), the Examiner
withdrew the rejection of claims 12–19. Ans. 3.
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CLAIMED SUBJECT MATTER
The claims relate to a two-part sheet metal elevator guide rail that has
a first part 40 formed from a metal sheet, which has an exterior treated to
resist corrosion, bent into a configuration that mounts within an elevator
hoistway and guides an elevator car or counterweight, and a second cover
part 48 formed from a different metal to cover an exterior surface of the first
sheet metal part with a configuration that establishes a coefficient of friction
to facilitate brake engagement with the cover to resist movement along the
guiderail. Spec. ¶¶ 4, 47, Fig. 2.
Claims 1 and 20 are independent. Claims 2–11 each of which
depends, either directly or indirectly, from claim 1. Claim 1 is illustrative of
the claimed subject matter and is reproduced below with emphasis added to
highlight the limitation that is central to Appellant’s patentability arguments.
1. An elevator guide rail, comprising:
a metal sheet comprising a first metal bent into a
configuration that establishes at least one mounting portion
configured to facilitate mounting the guiderail within an elevator
hoistway and at least one guiding portion configured to guide
movement of an elevator car or counterweight along the
guiderail, the metal sheet including an exterior surface treated to
resist corrosion; and
a cover over at least some of the exterior surf ace, the cover
comprising a second, different metal having an exterior that is
different than the exterior surf ace of the metal sheet, the cover
exterior being configured to establish a coefficient of friction to
facilitate brake engagement with the cover for resisting
movement of the elevator car or counterweight along the
guiderail.
Appeal Br. 8 (Claims App.).
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OPINION
In the Non-Final Action, the Examiner rejected claims 1–11 and 20
after determining the claimed subject matter to be obvious over the
combined teachings of Fargo, Resch, and Miller. Non-Final Act. 3–7.
Appellant contends that the Examiner erred by misapprehending the
teachings of Resch, which Appellant asserts “explicitly teaches away from
the Examiner’s suggested modification” that is necessary to reach the
claimed combinations. Appeal Br. 3. Specifically, Appellant contends
Resch teaches against modifying the metal sheet disclosed in Fargo to have
“an exterior surface treated to resist corrosion,” which independent claim 1
recites. Id. at 4. This alleged error is Appellant’s only basis for contending
the Examiner’s rejection of claims 1–11 should be reversed. See id. at 3–5.
Notably, although Appellant argues dependent claim 8 separately, the
substance of that argument is essentially the same as the argument made for
the rejection of claims 1–7 and 9–11. See id. at 5. In addition, as the
Examiner notes at page 4 of the Answer, Appellant does not present any
separate patentability arguments for independent claim 20, that does not
include a similar limitation requiring “an exterior surface [of the metal sheet
to be] treated to resist corrosion,” which underlines the only patentability
argument Appellant makes in this appeal. Id. As a result, we summarily
sustain the Examiner’s rejection of claim 20 and we select claim 1 to decide
this appeal, with claims 2–11 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the
appeal as to a single ground of rejection of a group of claims argued
together). For the following reasons, we do not find Appellant’s argument
persuasive.
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The Examiner finds Fargo to disclose the “metal sheet” 20, 26 that
claim 1 recites, except it is “silent with respect to the metal sheet including
an exterior surface treated to resist corrosion and a cover over at least some
of the exterior surface.” Non-Final Act. 3. The Examiner, however, finds
further that Resch teaches it was known to treat the exterior surface of the
metal sheet of an elevator guide rail to resist corrosion and finds that Miller
teaches the recited “cover” 40 over an exterior surface of the metal sheet 32
of guide rail 24. Id. at 3–4 (citing Resch, ¶ 2, Fig. 1; Miller, ¶¶ 24, 27). The
Examiner reasons that a skilled artisan at the time of the invention would
have known to modify the exterior surface of the metal sheet that Fargo
discloses with a corrosion resist treatment because Resch teaches that this
was a known process used for “service life and operability” of the part. Id.
at 3. The Examiner reasons also that:
[i]t would have been obvious to one having ordinary skill in the
art at the time that the instant invention was made to place a
cover, as taught by Miller et al, over the treated exterior surface
of the metal sheet of Fargo et al as modified by Resch et al, to
provide a second, different metal having an exterior that is
different than the exterior surface of the metal sheet of Fargo et
al to establish a coefficient of friction to facilitate brake
engagement with the cover for resisting movement of an
elevator car or counterweight along the guiderail, for
operability and safety of an elevator.
Id. at 4.
Appellant does not dispute the findings and reasoning of the Examiner
that are supported by Fargo and Miller. See Appeal Br. 3–5; see also Reply
Br. 1–4. Instead, Appellant argues that the Examiner misapprehends the
teachings of Resch and, when Resch is read for what it teaches as a whole,
there is no rational underpinning to the Examiner’s reasoning for why it
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would have been obvious to a person of ordinary skill in the art to modify
the exterior surface of the recited metal sheet with a treatment to resist
corrosion. Id. Specifically, Appellant argues that Resch “does not teach
how to protect a guide rail.” Reply Br. 1. Appellant does not dispute that
paragraph 2 of Resch, which the Examiner cites as support, teaches using a
treatment to resist corrosion, but contends that paragraph 2 does not show it
was known to use the treatment with guide rails. Reply Br. 2.
In particular, Appellant contends that Resch, when considered as a
whole, supports an opposite conclusion that the corrosion resistant treatment
cannot be used with guide rails. Appeal Br. 3–4 (citing Resch, ¶ 8); Reply
Br. 2 (citing Resch, ¶¶ 4, 8). In particular, Appellant highlights paragraph 8
of Resch, which states:
[t]he sacrificial layers mentioned in the introduction are
also not suitable for a temporary protection, since they have the
disadvantage that they enter into an intimate connection with
the surface to be protected and cannot be removed again or can
be removed only with a substantial outlay on processing.
Moreover, they change the properties of the blank surface and
thus cannot be used with guide rails, drive shafts and the like.
(emphasis added). Appellant reads “in the introduction” from the above
paragraph to include those treatments mentioned in paragraph 2, and we
agree. See Appeal Br. 4; see also Reply Br. 2. In view of Resch’s teaching
in paragraph 8, Appellant argues that “[t]he Examiner’s interpretation of
paragraph [0002] is directly contrary to the explicit statement in paragraph
[0008], is therefore unreasonable, and cannot serve as a basis for attempting
to establish a prima facie case of obviousness.” Reply Br. 2.
We are not persuaded, however, that paragraph 8 of Resch supports
Appellant’s “teaching away” argument. Although we do agree with
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Appellant to an extent, it is limited to agreeing that paragraph 8 of Resch
teaches against using the corrosion resistant treatments mentioned in
paragraph 2 on the part of a guide rail that is in direct contact with an
elevator car or counterweight. We disagree, however, that it teaches against
using the treatments on all parts of a guide rail. Our understanding is
informed by paragraph 6 of Resch, which clarifies that the “blank surface”
of a guide rail that is identified in paragraph 8 refers specifically to the
“running surfaces” of such rails because those are the parts that directly
interact with the elevator car or counterweight and, as such, are the only
parts that must be “absolutely smooth and clean.” With this context, we find
that a skilled artisan would understand Resch’s reference to “guide rail” in
paragraph 8 as intending to identify specifically the “running surfaces”
portion of an elevator guide rail.
As a result, we do agree Resch teaches against treating the recited
“metal sheet” portion of Appellant’s claimed elevator guide rail because that
portion does not form the “running surfaces” or come into direct contact
with an elevator car or counterweight. A skilled artisan would understand
instead that the “cover” portion that claim 1 recites is the “running surface”
of Appellant’s claimed guide rail. The Examiner does not suggest a skilled
artisan would have understood Resch to show it was known to treat the
recited cover to resist corrosion. Rather, the Examiner determines that it
would have been obvious “to place a cover . . . over the treated exterior
surface of the metal sheet . . . to provide a second, different metal having an
exterior that is different than the exterior surface of the metal sheet . . . to
establish a coefficient of friction to facilitate brake engagement with the
cover for resisting movement of an elevator car or counterweight along the
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guiderail.” Non-Final Act. 4 (emphasis added). Notably, Appellant does not
dispute the rational underpinning of this determination by the Examiner,
except in so far as to dispute the obviousness of treating the exterior surface
of the metal sheet.
Appellant has not persuasively shown Resch teaches away from
modifying the metal sheet disclosed in Fargo because the claimed “metal
sheet” is simply the supporting structure for the “cover,” which a skilled
artisan would understand to be the structure that forms the “running surface”
of the claimed guide rail. Accordingly, a skilled artisan would understand
that because the “metal sheet” of the claimed guide rail does not come into
direct contact with an elevator car or counterweight, it is not required to be
“absolutely smooth and clean,” and, thus, Resch’s reference to “guide rails”
in paragraph 8 does not apply to the “metal sheet” disclosed in Fargo. Thus,
because of each of the above factors, we find no error or deficiency with the
Examiner’s reliance on paragraph 2 of Resch to support the determination
that a skilled artisan would have known to modify the exterior surface of the
metal sheet disclosed in Fargo with a corrosion resist treatment because it
was a known process used to improve the “service life and operability” of
that metal part.
For the foregoing reasons, Appellant has not shown persuasively that
the Examiner’s rejection of claim 1 was improper. Therefore, because
claims 2–11 fall with independent claim 1, we sustain the Examiner’s
rejection of claims 1–11.
CONCLUSION
The Examiner’s rejection of claims 1–11 and 20 is affirmed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–11, 20 103(a) Fargo, Resch,
Miller
1–11, 20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED