ThyssenKrupp Elevator AG

Patent Trials and Appeals Board

Feb 28, 2020

15787795 - (D) (P.T.A.B. Feb. 28, 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.
15/787,795 10/19/2017 Frank P. Dudde 0119378.0649266 6517
26874 7590 02/28/2020
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
MCKINNON, LASHAWNDA T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRANK P. DUDDE, PETER P. FELDHUSEN,
GOMAA G. ABDELSADEK, ALAN M. PARKER, JIE XU,
STEPHEN D. ALLEN, and MIKE PALAZZOLA
____________________

Appeal 2019-004907
Application 15/787,795
Technology Center 1700
____________________

Before DONNA M. PRAISS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Action rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
ThyssenKrupp Elevator AG. Appeal Br. 2.
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The invention is related to a suspension and transmission device for
use with an elevator system. Appeal Br. 4. Claim 1 illustrates the subject
matter claimed and is reproduced below:
1. A suspension and transmission strip for use with
an elevator system, wherein the strip defines a longitudinal
direction and a transverse direction, wherein the strip
comprises:

(a) a first component, wherein the first component
comprises a composite formed from nonmetallic fiber and a
second polymer comprising a thiol-cured epoxy; and

(b) a second component, wherein the second component
comprises a first polymer, wherein the second component is
configured to surround the first component;

wherein the suspension and transmission strip is
connectable with an elevator and is configured to support and
hoist the elevator in use.

Appellant requests review of the following rejections maintained by
the Examiner:
I. Claim 13 rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.

II. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over
Brewster (US 4,092,818, issued June 6, 1978), Arnold (US 5,326,411, issued
July 5, 1994), and Shin (Junghwan Shin et al., Thiol-lsocyanate-Ene Ternary
Networks by Sequential and Simultaneous Thiol Click Reactions, Chem.
Mater. 2010, 22, 2616–2625).

III. Claims 1–7, 10–12, and 15–20 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brewster, Arnold, and Sangermano (Marco
Sangermano et al., Preparation and Characterization of hybrid thiol-
ene/epoxy UV-thermal dual-cured systems, Polymer Int. 2010, 59:1046–
1051).
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IV. Claims 8 and 9 rejected under 35 U.S.C. § 103(a) as
unpatentable over Brewster, Arnold, Sangermano, and Pelto-Huikko
(WO 2009/090299 A1, published July 23, 2009).

V. Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable
over Brewster, Arnold, Sangermano, and Groover (Fiber-Reinforced
Polymers (§ 9.4.1), Fundamentals of Modern Manufacturing: Materials,
Processes and Systems, John Wiley & Sons, January 7, 2010, p. 200).

VI. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over
Blackman (US 2,753,979, issued July 10, 1956), Arnold, and Shin.

VII. Claim 1–7, 10–12, and 15–20 rejected under 35 U.S.C. § 103(a)
as unpatentable over Blackman, Arnold, and Sangermano.

VIII. Claims 8 and 9 rejected under 35 U.S.C. § 103(a) as
unpatentable over Blackman, Arnold, Sangermano, and Pelto-Huikko.

IX. Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable
over Blackman, Arnold, Sangermano, and Groover.

OPINION
35 U.S.C. § 112, 1st paragraph - Written Description Requirement
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we reverse the Examiner’s rejection of claim 13 under 35
U.S.C. § 112, first paragraph, for lack of written description for the reasons
Appellant provides.
As the Examiner notes, claim 13 recites “the first component further
comprises a third polymer comprising thiol-isocyanate-ene ternary
network.” Final Act. 2. The Examiner finds that the noted language, when
read in the context of claim 1, is not described in the Specification in such a
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way as to reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had possession of the
claimed invention. Id. According to the Examiner, while support exists in
paragraphs 121–126 for thiol-isocyanate-ene ternary network, there is no
support for the first component comprising the thiol-cured epoxy recited in
claim 1 and the thiol-isocyanate-ene ternary network recited in claim 13. Id.
Appellant argues that the Specification describes polymers for use in
the components of the strip, including thiol-cured epoxies and thiol-
isocyanate-ene-ternary networks. Appeal Br. 17–18; Reply Br. 10;
Spec. ¶¶ 119–126. Appellant further argues that the Specification describes
the components of the strip as comprising any of the material options
described. Appeal Br. 17; Spec. ¶¶ 66–67. Thus, Appellant contends that
the Specification discloses, with reasonable clarity, a first component
comprising a thiol-cured epoxy and thiol-isocyanate-ene-ternary networks to
satisfy the written description requirement for claim 13. Appeal Br. 17–18;
Reply Br. 10.
We agree with Appellant that there is reversible error in the
Examiner’s determination that the disputed language lacks adequate
descriptive support.
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.

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See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). “This inquiry . . . is a question of fact. . . . [T]he level of detail
required [in the Specification as originally filed] to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991).
The claimed subject matter need not be described in haec verba in the
Specification in order for that Specification to satisfy the description
requirement. In re Smith, 481 F.2d 910, 914 (CCPA 1973). That is, it is
enough that one of ordinary skill in the art would recognize that the inventor
invented what is claimed without a claim using the same words as the
Specification. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989,
997 (Fed. Cir. 2000).
The premise of the Examiner’s rejection is that there is no express
support in the Specification, as originally filed, for a component comprising
the thiol-isocyanate-ene ternary network recited in claim 13 and the thiol-
cured epoxy recited in claim 1, from which claim 13 depends.
As Appellant explains, both compounds are disclosed as suitable
materials for making any component of the strip. Appeal Br. 17; Spec. ¶ 37.
Moreover, the Specification discloses that certain compounds can be
blended. Spec. ¶ 112 (describing the use of blended epoxy resins). The
Specification also discloses that “[i]n addition to thiol-cured epoxies being
used in some versions of a strip, in the same and/or other versions a hybrid
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epoxy, thiol-epoxy/thiol-ene, can be used.” Id. ¶ 119 (emphasis added).
Thus, the Specification describes a blend or combination of a thiol-epoxy
and a thiol-ene, which appears to be the combination recited in claim 13.
One skilled in the art, upon reading these disclosures, would understand that
the invention encompasses components made of multiple materials. That is,
one of ordinary skill in the art would recognize that the inventor invented
what is claimed without a claim using the same words as the Specification.
Union Oil, 208 F.3d at 997. Given these disclosures, the Examiner has not
explained adequately why the disputed claim language lacks written
descriptive support.
Accordingly, we reverse the Examiner’s rejection of claim 13 under
35 U.S.C. § 112, first paragraph, as lacking written descriptive support for
the reasons the Appellant presents and we give above.
Prior Art Rejections
The Examiner maintains two sets of rejections under 35 U.S.C.
§ 103(a), each set based on a common combination of base references:
Brewster, Arnold, and either Shin or Sangermano for Rejections II–V and
Blackman, Arnold, and either Shin or Sangermano for Rejections VI–IX.
Appellant relies on the same line of arguments to address both sets of
rejections. See generally Appeal Br. We limit our discussion to claim 1 in
addressing all of the rejections.
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we reverse the Examiner’s prior art rejections of claims 1–12
and 14–20 under 35 U.S.C. § 103(a) essentially for the reasons the Appellant
presents. We add the following for emphasis.
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Claim 12
Claim 1 recites a suspension and transmission strip having a first
component comprising a composite formed from nonmetallic fiber and a
second polymer comprising a thiol-cured epoxy.
We refer to the Examiner’s Final Office Action for a complete
statement of the various rejections of claim 1. See generally Final Act.3
Briefly, the Examiner finds that Arnold discloses a belt strip having a first
component comprising a composite formed of nonmetallic fibers and a
polymer. Id. at 4. The Examiner finds that Arnold does not disclose the first
component as comprising a thiol-cured epoxy. Id. The Examiner turns to
Shin and Sangermano for the missing feature. The Examiner finds that Shin
teaches a hybrid network comprising a thiol-cured epoxy with enhanced
physical and 1nechanical properties. Final Act. 4; Shin 2617. Alternatively,
the Examiner finds that Sangermano discloses a hybrid thiol-ene/epoxy
cured polymer with unsaturated groups having increased thermal stability
and improved properties. Final Act. 7; Sangermano Abstr. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to substitute the polymer of either Shin or Sangermano for both the core
coating and the outer layer as Arnold teaches using the same material for
both and for the benefits disclosed by Shin and Sangermano. Final Act. 4, 7.

2 A discussion of Brewster and Blackman is unnecessary for disposition of
this appeal. The Examiner did not rely upon these references to address the
components of the suspension and transmission strip recited in claim 1. See
generally Final Act.
3 In our discussion and for brevity, citations to the Final Action are limited to
the first occurrence of when the Examiner discusses each reference.
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Appellant argues that there is no motivation to combine the teachings
of Shin or Sangermano with the teachings of Arnold. Appeal Br. 16.
According to Appellant, while Shin and Sangermano relate to material
chemistry and epoxies, Arnold does not disclose the material science of such
polymers nor the use of epoxies. Appeal Br. 16; Reply Br. 9. Thus,
Appellant contends that Shin or Sangermano provides neither reason nor
motivation to amend the teachings of the cited art so as to incorporate a thiol
with an epoxy. Appeal Br. 16.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
fact finder must be aware “of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(“warning against a ‘temptation to read into the prior art the teachings of the
invention in issue’”)).
The premise of the Examiner’s rejections is that one skilled in the art
would have turned to Shin and Sangernano to improve the physical and
mechanical properties of a belt because this skilled artisan “clearly would
have polymer chemistry knowledge as is clearly demonstrated by Arnold
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which teaches belts in use with polymers and such is known in the art and
commonly practiced.” Ans. 21. The Examiner, however, does not direct us
to any portion of Arnold that supports the Examiner’s premise. In fact,
Arnold merely discloses the use of a polymer or elastomeric material to coat
a fabric core without discussing any details as to the composition of these
materials. Arnold col. 6, ll. 25–26. Rather, Arnold only specifically
discloses rubber type materials. Id. at col. 6, ll. 48–58. Such a limited
disclosure is insufficient to establish the level of skill in this art. Thus, the
Examiner has not adequately explained why one skilled in the art would
have found the materials of Shin and Sangermano to be suitable for making
Arnold’s belt/strip. The Examiner has not provided an adequate technical
explanation with the requisite rational underpinning of why or how one
skilled in the art, absent impermissible hindsight, would have arrived at the
claimed suspension and transmission strip from the combined teachings of
Arnold, Shin, and Sangermano. Thus, the Examiner has not made a prima
facie case of obviousness.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1–12 and 14–20 under 35 U.S.C. § 103(a) for the reasons Appellant presents
and the reasons we give above.

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CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
13 112, first
paragraph
Written description 13
1 103(a) Brewster, Arnold,
Shin
1
1–7, 10–12,
15–20
103(a) Brewster, Arnold,
Sangermano
1–7,
10–12,
15–20
8, 9 103(a) Brewster, Arnold,
Sangermano,
Pelto-Huikko
8, 9
14 103(a) Brewster, Arnold,
Sangermano,
Groover
14
1 103(a) Blackman, Arnold,
Shin
1
1–7, 10–12,
15–20
103(a) Blackman, Arnold,
Sangermano
1–7,
10–12,
15–20
8, 9 103(a) Blackman, Arnold,
Sangermano,
Pelto-Huikko
8, 9
14 103(a) Blackman, Arnold,
Sangermano,
Groover
14
Overall
Outcome
1–20

REVERSED