Ex Parte 6,892,861 B2 et al

Patent Trial and Appeal Board

May 31, 2016

95002222 (P.T.A.B. May. 31, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,222 09/13/2012 6,892,861 B2 002644/0042 6485
26610 7590 05/31/2016
STROOCK & STROOCK & LAVAN LLP
180 MAIDEN LANE
NEW YORK, NY 10038
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/31/2016 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 PATENT TRIAL AND APPEAL BOARD
________________

W. TODD BAKER
Third Party Requester and Respondent

v.

INVENTIO AG
Patent Owner and Appellant
____________

Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2
Technology Center 3900
________________

Before JAMES T. MOORE, STEPHEN C. SIU, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

2
SUMMARY
Background
This proceeding arose from a request for inter partes reexamination of
US Patent 6,892,861 B2, which is entitled “DESTINATION CALL
CONTROL FOR MODERNIZING ELEVATOR INSTALLATION” (issued
to Paul Friedli on May 17, 2005 from Application 10/316,575, filed
December 11, 2002) (“the ’861 Patent”). Inter partes Reexamination
Request 95/002,222 (“Request”) was filed September 13, 2012 by Requester
W. Todd Baker.1, 2
The ’861 Patent issued with claims 1–11. PO App. Br. 4. New claims
12–35 were added in the amendment filed February, 7, 2013. RAN 11. For
reasons explained more fully below, the Examiner conducting the
reexamination proceeding ultimately rejected original claims 1–4, 7, 10, and
11, as well as newly-added claims 12–35. PO App. Br. 3–4. Owner timely
appealed. See generally PO App. Br.
According to Owner, the present appeal is related to inter partes
Reexamination Control No. 95/002,228, which was requested for

1 Otis Elevator Company is asserted to be Requester’s real party in interest.
Request 1.
2 In addition to the above-noted Request, we also refer to various other
documents throughout this Opinion, including the following: (1) Non Final
Rejection, mailed Dec. 7, 2012 (“Non-Final Rej.”); (2) the Action Closing
Prosecution, mailed December 4, 2013 (“ACP”); (3) the Right of Appeal
Notice, mailed April 11, 2014 (“RAN”); (4) Patent Owner’s Amended
Appeal Brief, filed July 10, 2014 (“PO App. Br.”); (5) Requester’s
Respondent Brief, filed August 11, 2014 (“Resp. Br.”); and (6) the
Examiner’s Answer, mailed October 3, 2014 (incorporating the RAN by
reference) (“Ans.”).
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

3
US 6,935,465 B2 (the “’465 Patent”), PTAB Appeal 2014-007359 (“the
’7359 Appeal”). PO App. Br. 3. As will be explained in more detail below,
the claims of these related appeals are directed to similar subject matter,
differing most notably in that the present claims are directed to “[a] device
for temporarily operating an elevator installation during modernization”
(claim 1(emphasis added)) and “[a] system for operating an elevator
installation during a modernization process” (claim 18 (emphasis added)),
whereas the claims of the ’465 Patent are directed to “[a] method of
modernizing an elevator installation” (’7359 Appeal, claim 1 (emphasis
added)).
“The ’861 Patent and the ’465 Patent were also involved in the patent
infringement litigation Inventio AG v. Thyssenkrupp Elevator Americas
Corp., 1:08-cv-00874 in the United States District Court of Delaware” (“the
’874 litigation”). PO App. Br. 3. In the ’874 litigation, the jury found, inter
alia, claims 1 and 3 of the ’861 Patent, as well as claims 1–3 of the ’465
Patent, to be invalid for being obvious under 35 U.S.C. § 103. Inventio AG
v. Thyssenkrupp Elevator Americas Corp., 2014 WL 8260040 (D.Del.
2015). Owner subsequently sought, inter alia, judgment as a matter of law
on the finding of obviousness (Inventio AG v. Thyssenkrupp Elevator
Americas Corp., 08-00874-RGA, Document 602 (“Inventio AG
Memorandum Opinion”) at 2), but the District Court denied that request (id.
at 18) aff’d 649 F.3d 1350 (Fed. Cir. 2011).
In the present appeal, we have jurisdiction under 35 U.S.C. §§ 134
and 315. We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

4
produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We AFFIRM. Pursuant to 37 C.F.R. § 41.77(a), we designate our
affirmance of the obviousness rejections as NEW GROUNDS OF
REJECTION PURSUANT TO 41.77(a).
The Invention and Claims
The district court explained the invention as follows:
Inventio AG, a provider of elevators, escalators and
related services, reportedly owned [the ’861 and ’465 Patents,]
which involved modernizing or upgrading an existing
conventional elevator system and its components to a destination
call control elevator system.
In a conventional elevator system, a passenger calls the
elevator using the up/down buttons at the floor terminal and then
selects the destination floor once inside. Patents ’861 and ’465
disclose a modernized elevator system [that] allows a passenger,
at the boarding floor, to select the desired destination floor from
a keypad-button and the computerized elevator control selects
the fastest elevator to transport the passenger to the destination
floor. The modernization process involves replacing the original
floor call transmitters (up/down buttons) with new floor
terminals (buttons pushed to call an elevator); a computing unit
[that] processes the passenger’s input; and a modernizing device
[that] acts as an intermediary between the computing unit and the
elevator control. By updating the technology pursuant to the
patents’ directions, conventional elevators can be converted to a
destination call control elevator system without completely
shutting down the elevator bank, thus saving time and money.
Inventio AG, 2014 WL 8260040.
Independent claim 1 is illustrative of the appealed claims:
1. A device for temporarily operating an elevator installation
during modernization, the elevator installation having at least
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

5
one elevator and at least one elevator control for controlling the
elevator in response to call reports generated by hall call
transmitters and car call transmitters, comprising:
a modernizing device temporarily connected to the
elevator control controlling the elevator in response to the call
reports, the elevator control being disconnected from the hall call
transmitters and the car call transmitters of the elevator
installation; and
at least one computing unit connected to said modernizing
device for generating at least one destination signal to said
modernizing device, said modernizing device converting said
destination signal into a call report and generating said call report
to the elevator control for controlling the elevator.
The Rejections
1. Claims 1–3, 12–14, and 24–26 stand rejected under 35 U.S.C.
§ 103(a) over Schröder, “Advanced Dispatching,” ELEVATOR WORLD, 1990
(“Schröder”) in view of Ovaska (US 5,352,857, issued Oct. 4, 1994
(“Ovaska ’857”)).
2. Claims 4, 7, 15–17, and 27–29 stand rejected under 35 U.S.C.
§ 103(a) over Schröder in view of Ovaska ’857 and Ovaska (US 4,844,204;
issued July 4, 1989 (“Ovaska ’204”)).
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) over Schröder in
view of Ovaska ’857 and Ichioka (US 4,724,931; issued Feb. 16, 1988
(“Ichioka”)).
4. Claims 10, 11, 18–20, and 30–32 stand rejected under 35 U.S.C.
§ 103(a) over Schröder in view of Friedli (US 5,689,094; issued Nov. 18,
1997 (“Friedli ’094”)) and Ovaska ’857.
5. Claims 21–23 and 33–35 stand rejected under 35 U.S.C. § 103(a) over
Schröder in view of Friedli ’094, Ovaska ’857, and Ovaska ’204.
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

6
6. Claims 12–35 stand rejected under 35 U.S.C. 314(a).
7. Claims 12–35 stand rejected under 35 U.S.C. § 112, first paragraph.

THE REJECTIONS UNDER 35 U.S.C. §§ 314 AND 112, ¶ 1
In response to the Examiner issuing the Non-Final Rejection of
original claims 1–4, 7, 10, and 11, Owner amended the claims, adding new
claims 12–35. See Response to Office Action Mailed 12/7/2012 (filed
Feb. 7, 2013). The Examiner subsequently rejected all of these newly added
claims under 35 U.S.C. § 314(a) for improperly enlarging the scope of the
original claims of the patent being reexamined, as well as under
35 U.S.C.§ 112, ¶ 1, for lacking adequate written description support for the
full scope of the new claims. ACP 4–10 (setting forth approximately five
general rationales for why the claims—or various subsets of the claims—are
broader than the original claims and are not supported by the ’861 Patent’s
original Specification).
In a filing submitted subsequent to the Action Closing Prosecution,
Owner attempted to amend new claims 12–35. See Response to Action
Closing Prosecution Mailed 12/4/13 (filed Feb. 4, 2014). The Examiner
denied entry of this claim amendment (RAN 1–10), and Owner
acknowledged the Examiner’s denial of entry (PO App. Br. 4). Accordingly,
we consider on appeal only the original version of new claims 12–35, which
appears in “Part 1 Listing of Claims under the Appeal” of Owner’s Appeal
Brief Claim Appendix—not the non-entered proposed amendments, which
appear in Part 2 of the Appeal Brief Claim Appendix.
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

7
Independent claim 12, which is reproduced below with emphasis
added, is illustrative of new claims 12–35:
12. A device for operating an elevator installation during a
modernization process in which an up-down elevator control
system is converted to a destination call control system by
modifying at least one elevator component in the elevator
installation, and the device not being required to operate once
the modernization process has been completed, the elevator
installation having a plurality of elevators, at least one existing
elevator control controlling at least one of the plurality of
elevators in response to call reports generated by hall call
transmitters and car call transmitters, the device comprising:
a modernizing device responsively connected to the
elevator control controlling the elevator in response to the call
reports at least during the modernization process, the elevator
control being non-responsive to signals from the hall call
transmitters and the car call transmitters of the elevator
installation at least during part of the modernization process in
which the up-down elevator control system is converted to the
destination call control system; and
at least one computing unit responsively connected to
said modernizing device generating at least one destination
signal to be transmitted to said modernizing device, said
modernizing device receiving said at least one destination
signal and converting said at least one destination signal into at
least one call report and generating said at least one call report
to be transmitted to the elevator control controlling the elevator
during the modernization process in which the up-down
elevator control system is converted to the destination call
control system.
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

8
Contentions
The Examiner’s first rationale for finding that all of the new claims
improperly broaden the original claims is set forth below:
New independent claims 12, 18, 24, and 30 are broader than the
original ’861 patent claims because they remove the word
“temporarily” and add that the device or system is “not being
required to operate once the modernization process has been
completed.” Changing “temporarily operating” to “operating”
in claims 12 and 18, and changing “temporarily connected” to
“connected” in claims 12, 18, 24, and 30 is clearly broadening.
Adding that the device or system is “not being required to
operate once the modernization process has been completed”
taken together with removing the “temporarily” limitation,
broadens the claims because [the new claim language] covers
leaving the modernizing device installed (it is not temporary)
and operative (“not required to operate” does not preclude the
device or system from being able to operate.)
ACP 5. Based upon this rationale, the Examiner rejects new claims 12–35
under 35 U.S.C. § 314(a). Id. From this statement, we infer the Examiner’s
position to be that all of the newly added dependent claims likewise present
the same issue.
Owner does not dispute that the adjective “temporarily” was deleted
from the new claims. See PO App. Br. 29–30. Owner instead contends that
removal of the term “temporarily” does not broaden the scope
of [independent claims 12, 18, 24, and 30] because the added
limitation that the device operates “during a modernization
process in which an up-down elevator control system is
converted to a destination call control system by modifying at
least one elevator component in the elevator installation”
sufficiently conveys the meaning that the device is not used
permanently but rather during the modernization process.
Similarly, the limitation that the device “not being required to
operate once the modernization process has been completed”
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

9
merely clarifies that the device need not be physically
disconnected from the elevator control, emphasizing its
temporary nature.
Id.
Principles of Law
The Federal Circuit’s oft-quoted standard for broadening is as
follows:
A claim of a reissue application is broader in scope than
the original claims if it contains within its scope any conceivable
apparatus or process [that] would not have infringed the original
patent. A reissue claim that is broader in any respect is
considered to be broader than the original claims even though it
may be narrower in other respects.
Tilloston, Ltd. V. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir.
1987).
The same broadening test is applied to claims in reexamination.
Anderson v. International Eng’g & Mfg., 160 F.3d 1345, 1349 (Fed Cir.
1998).
Analysis
“Before considering the rejections[], []we must first [determine the
scope of] the claims.” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
We therefore first interpret the meaning and scope of the original term
“temporarily connected” and then compare this original scope to that
covered by the new term “responsively connected.”
The Specification of the ’861 Patent does not appear to provide any
sufficiently clear definition of what constitutes a “temporary” connection.
Nor does the Specification sufficiently explain how a temporarily connected
device is objectively structurally distinguishable from a permanently
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

10
connected device. Nonetheless, we understand the language “temporarily
connected” is intended to somehow distinguish the claimed modernizing
device from a modernizing device that is permanently connected.
We therefore understand the language of claim 1, “a modernizing
device temporarily connected to the elevator control,” to require a
connection that is capable of being disconnected, at least in some manner.
“A claim construction that gives meaning to all the terms of the claim is
preferred over one that does not do so.” Merck & Co. v. Teva Pharms. USA,
Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). See Mangosoft, Inc. v. Oracle
Corp., 525 F.3d 1327, 1330–31 (Fed. Cir. 2008) (rejecting claim
construction that “ascribes no meaning to the term . . . not already implicit in
the rest of the claim.”).3

3 We do not address the question of whether the language of the original
claims, “temporarily connected”—at least in the context of the appealed
device claims—objectively distinguishes covered structures having
temporary connections from non-covered structures that have permanent
connections, or whether the designations of temporary and permanent
reasonably may be interpreted to be mere mental constructs or subjective
intentions that fail to patentably distinguish associated structure. That is, we
do not address whether claim 1 sets forth the metes and bounds of claim
protection being sought with sufficient particularity to satisfy the
definiteness requirements of 35 U.S.C. § 112, ¶ 2. The Examiner did not
issue any indefiniteness rejection with respect to new claims 12–35. See,
e.g., RAN. See also, Ex parte Frye, 94 USPQ2d at 1075 (the Board reviews
the appealed rejections for error based upon the issues identified by
Appellants, and in light of the arguments and evidence produced thereon.)
Moreover, the Board does not have the authority to make any definiteness
determinations pursuant to § 112, ¶ 2, in relation to original patent claims in
an inter partes reexamination proceeding. See 37 C.F.R. § 1.906(a)
(“Claims in an inter partes reexamination proceeding will be examined on
the basis of patents or printed publications and, with respect to subject
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

11
As such, we agree with the Examiner that changing the language from
“a modernizing device temporarily connected” to “a modernizing device
responsively connected” improperly broadens the scope of claims 12–35.
The new language is not limited to modernizing devices that are temporarily
connected. Rather, the new language additionally encompasses devices for
temporarily operating an elevator installation during modernization that
comprise modernizing devices that, in turn, are permanently connected to
the elevator control. For example, a device for temporarily operating an
elevator installation could have additional means for bypassing the
permanently installed modernizing device in those circumstances that the
modernization is completed.
We are unpersuaded by Owner’s argument that “the limitation that the
device ‘not being required to operate once the modernization process has
been completed’ merely clarifies that the device need not be physically
disconnected from the elevator control, emphasizing its temporary nature.”
PO App. Br. 30. As already explained, the legal test is not whether the
additional language is “emphasizing [the connection’s] temporary nature.”
Id. (emphasis added).
Rather, the legal test is whether the new claim “contains within
its scope any conceivable apparatus or process [that] would not have
infringed the original patent.” Tilloston, Ltd., 831 F.2d at 1037 n.2.
Furthermore, “[a] reissue claim that is broader in any respect is
considered to be broader than the original claims even though it may

matter added or deleted in the reexamination proceeding, on the basis of the
requirements of 35 U.S.C. 112”).
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

12
be narrower in other respects.” Id. This holding applies to claims
under reexamination, as well. Anderson, 160 F.3d at 1349.
Accordingly, we sustain the rejection of claims 12–35 under
35 U.S.C. § 314(a) for improperly broadening the scope of the original
claims.
Because we sustain the improper broadening rejection of claim 12–35
for the reasons explained above, we need not address the Examiner’s
additional rationales (ACP 5–10) for rejecting claims 12–35 under 35 U.S.C.
§ 314(a). We likewise need not address the written description rejection of
claims 12–35 under 35 U.S.C. § 112, ¶ 1. See In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an
anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421
(Fed. Cir. 1984) (ITC can decide a single dispositive issue of numerous
resolved by the presiding officer; there is no need for the Commission to
decide all issues decided by the presiding officer).

THE OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. § 103
CLAIM INTERPRETATIONS
“Before considering the rejections[],[] we must first [determine the
scope of] the claims.” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
We therefore first interpret the scope of independent claim 1.
As noted above, the preamble of claim 1 recites “A device for
temporarily operating an elevator installation during modernization.” By
stating that the affirmatively recited “device” is for operating an elevator
installation instead of alternatively reciting a device in combination with an
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

13
elevator installation, this portion of the preamble indicates that the product
claim is affirmatively reciting only the claimed “device”—not the
combination of the device and the elevator installation. That is, the elevator
installation is only being recited inferentially, and as such, constitutes a non-
claimed workpiece upon which the affirmatively recited device is intended
to interact.
The next clause of claim 1’s preamble supports this interpretation,
reading “the elevator installation having at least one elevator and at least one
elevator control for controlling the elevator in response to call reports
generated by hall call transmitters and car call transmitters.” The body of
claim 1 then sets forth a “modernizing device” and “at least one computing
unit connected to the modernizing device.” Read as a whole, the claim
structure arguably indicates that the affirmatively recited “device” comprises
a modernizing device and at least one computing unit, but does not include
the elevator, the elevator control, the hall call transmitters, or the car call
transmitters. Rather, these latter components are merely elements of the
inferentially recited elevator installation. Restated, these portions of the
claim language tend to indicate that one would infringe claim 1 by making,
using, or selling merely a computing unit connected to a modernizing
device, so long as this combination is constructed such that it is capable of
interacting with and controlling the components of the non-claimed elevator
installation in the manner recited in claim 1.
However, other portions of claim 1 raise into question whether this
interpretation is accurate. More specifically, the first limitation of claim 1
recites, inter alia, “a modernizing device temporarily connected to the
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

14
elevator control controlling the elevator in response to the call reports, the
elevator control being disconnected from the hall call transmitters and the
car” (emphasis added).
By setting forth that the modernizing device is connected to the
elevator control, as opposed to setting forth that the modernizing device is
for connection to the elevator control, this language alternatively seems to
indicate that at least the elevator control is additionally being affirmatively
claimed, and quite possibly, that the hall- and car call transmitters are being
affirmatively claimed, as well. That is, this language seems to indicate that
one would not infringe claim 1 by providing merely the combination of the
interconnected modernizing device and computing unit. Rather, one would
only infringe claim 1 when one actually connects this combination to the
elevator control, as claimed. Or just as likely, claim 1 may be infringed only
when one connects the interconnected modernizing device and computing
unit to the elevator control and then disconnects the call transmitters from
the elevator control.
New claims 12–35 likewise present similar ambiguities in claim
scope. See, e.g., independent claim 12 (first reciting “[a] device for
operating an elevator installation,” but subsequently reciting, “a modernizing
device responsively connected to the elevator control controlling the elevator
in response to the call reports[], the elevator control being non-responsive to
signals from the hall call transmitters and the car call transmitters of the
elevator installation.”). But see, e.g., independent claim 18 (first reciting
“[a] system for operating an elevator installation” (emphasis added)
(implying that the system is separate from the elevator installation), but
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

15
subsequently setting forth limitations indicating that the claimed system
includes the elevator installation: “comprising, a plurality of elevators; at
least one existing elevator control[]; at least one floor terminal[]; a
computing unit responsively connected to said at least one floor terminal[];
and a modernizing device”).
The predecessor tribunal to the Patent Trial and Appeal Board has
held that “if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). However, we do not today address the question of whether
these ambiguities in the intended claim scope rise to the level of running
afoul of the definiteness requirements of 35 U.S.C. § 112, ¶ 2. The
Examiner did not issue any indefiniteness rejection with respect to new
claims 12–35. See, e.g., RAN. See also, Ex parte Frye, 94 USPQ2d at 1075
(the Board reviews the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon.)
Moreover, the Board does not have the authority to make any
definiteness determinations pursuant to § 112, ¶ 2, in relation to original
patent claims in an inter partes reexamination proceeding. See 37 C.F.R.
§ 1.906(a) (“Claims in an inter partes reexamination proceeding will be
examined on the basis of patents or printed publications and, with respect to
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

16
subject matter added or deleted in the reexamination proceeding, on the
basis of the requirements of 35 U.S.C. 112.”).
We instead interpret the claims consistently with the relatively narrow
manner in which they were interpreted by the Examiner and the Owner
during reexamination. That is, we interpret the claims as requiring the
existence of all recited connections and disconnections to be disclosed by the
prior art in order for the prior art to render the claims unpatentable. See,
e.g., PO App. Br. 16 (contending that the prior art reference, “Schröder[,]
does not describe how the supervisory controller interfaces with the old
elevator control in an overlay modernization); Non-Final Rej. 8–9 (finding
that “it would have been obvious . . . to disconnect the lines from the floor
call transmitter and the car call transmitter . . . to the elevator control and
connect the inputs to the old elevator controllers.”).
Based on this interpretation, we now turn to Owner’s arguments
regarding the obviousness rejections:
CLAIM 1 AND 3
Contentions
As noted above, claims 1 and 3, among others, stand rejected as
obvious over Schröder in view of Ovaska ’857. PO App. Br. 8. Owner
argues that this rejection is improper for various reasons. Owner first argues
that the “Fortune Declaration is improper and should be given little or no
evidentiary weight.” Id. Owner also argues that “[c]laims 1–3 are not
obvious over Schroder in view of Ovaska ’857” (id.at 8) because “(a) The
term ‘overlay’ does not have a well-known meaning as asserted in the
Fortune Declaration” (id. at 14); “(b) Ovaska ’857’s limited teaching of
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

17
simple passive adaptors is not sufficient to make up the deficiencies of
Schroder” (id. at 16), and as such, “[t]he RAN has failed to establish a prima
facie case of obviousness” (id.). Owner also argues that “The RAN fails to
show that one of ordinary skill in the art would have known to use
destination signals in the first instance or how to modify the adapter of
Ovaska ’857.” Id. at 20.
Owner presents additional arguments in relation to dependent claim 3.
Id. at 23.
Analysis
Initially, we observe that our reviewing court has sustained the
District Court’s independent determination that claims 1 and 3 are invalid
for obviousness. Inventio AG Memorandum Opinion, aff’d 649 F.3d 1350
(Fed. Cir. 2011). Our reviewing court’s decision is binding upon this Panel
in the present appeal. See Soverain Software LLC v. Victoria’s Secret Direct
Brand Management, LLC, Case No. 12-1649; -1650 (Fed. Cir. 2015)
(finding of obviousness binding on subsequent parties); See also U.S.
Ethernet Innovations LLC v. Texas Instruments Inc., No. 15-1510, Fed. Cir.;
2016 U.S. App. LEXIS 7398. (Federal Circuit U.S. Court of Appeals turned
away an appeal of a Texas federal judge’s holding of patent invalidity on the
basis of issue preclusion).
The District Court’s conclusion of obviousness appears to be based on
a body of evidence that goes beyond the combination of Schröder and
Ovaska ’857, which the Examiner relied upon in the present reexamination
proceeding. The District Court’s conclusion instead appears to be based
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

18
upon these two references in further combination with the following
documents:
(i) Fortune, “Overlays,” ELEVATOR WORLD (1985) at 41–44;
(ii) Lustig, “Modernization,” ELEVATOR TECHNOLOGY 3, PROCEEDINGS OF
ELEVCON ’90;
(iii) Schindler Miconic 10 Sales brochure;
(iv) Friedli ‘094; and
(v) Wolfe, “An Elevator Consultant’s Role in Elevator Modernization,”
ELEVATOR WORLD, (1989).
(vi) Arora, “Are Dispatching Overlays a Panacea in Improving Lift
Performance of the 1960s and 1970s?” (1996); and
(vii) Schröder (US 4,718,520; issued Jan. 12, 1988).
See Inventio AG’s Opening Brief in Support of Its Post-Trial Motion for
Judgment as a Matter of Law and/or For a New Trial, (filed Mar. 28, 2014)
at 13–14.
Because the District Court’s conclusion was based upon different
evidence than that considered by the Examiner, we designate our affirmance
of the obviousness rejection of claims 1 and 3 as constituting new grounds
pursuant to 37 C.F.R. § 41.77(b). Regardless, though, because this issue has
already been resolved, we need not address Owner’s present arguments
regarding the combination of only Schröder and Ovaska ’857 as they relate
to claims 1 and 3. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009)
(not reaching other rejections after upholding an anticipation rejection); see
also Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can
decide a single dispositive issue of numerous resolved by the presiding
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

19
officer; there is no need for the Commission to decide all issues decided by
the presiding officer).
CLAIM 2
Claims 2 and 3, which both depend directly from claim 1, read as
follows:
2. The device according to claim l wherein said
modernizing device has at least one output connected with at
least one floor call transmitter line input of the elevator control
for issuing said at least one call report.
3. The device according to claim l wherein said
modernizing device has at least one output connected with at
least one car call transmitter line input of the elevator control
for issuing said at least one call report.
Owner argues claims 2 and 3 separately from claim 1. PO App. Br.
23. Specifically, Owner argues that the claims’ “additional limitations are
directed to specific manners to connect the modernizing device and the
elevator control.” Id. Owner then argues why Ovaska ’857 does not teach
this feature and why the Declarations of Owner’s expert, J. Ray, “make it
clear that this is not the case.”
This argument is not persuasive of error regarding claim 2. The
District Court has already found claim 3 to be obvious, thereby rendering
Owner’s arguments and evidence unpersuasive in relation to that claim
(discussed above in the preceding section). Furthermore, Owner presents no
arguments regarding claim 2 that are separate from the arguments to claim 3.
That is, Owner presents no persuasive arguments or evidence (see id.) that
modernizing the floor call transmitter line input, as recited in claim 2, would
be any less obvious than modernizing the car call transmitter line input, as
recited in claim 3.
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

20

CLAIMS 10 AND 11
Owner argues the nonobviousness of independent claims 10 and 11
for the same reasons pertaining to claim 1. PO App. Br. 23. Owner
additionally argues that the Examiner’s further reliance on Friedli ’094 does
not cure the deficiency allegedly associated with the combination of
Schröder and Ovaska ’857, as applied to claim 1. Id. at 23–24. This
argument is unpersuasive or any error in the obviousness rejection of claims
10 and 11 because Owner does not argue that the additional features of these
claims result in any separate patentability.

CLAIMS 4 AND 7
Dependent claims 4 and 7 read as follows:
4. The device according to claim 1 wherein said
modernizing device has at least one input connected with at
least one drive line connected to elevator control for detecting a
target value generated by the elevator control.
7. The device according to claim 1 wherein said
modernizing device has at least one input connected with at
least one car indicator line of the elevator control for receiving
an indication signal generated by the elevator control.
In rejecting these claims as obvious, the Examiner additionally relies
upon Ovaska ’204 for teaching a “modernizing device has at least one input
connected with at least one drive line connected to elevator control.” E.g.,
RAN 25; see also Request 38.
Owner argues the nonobviousness of dependent claims 4 and 7 for the
same reasons pertaining to claim 1. PO App. Br. 24. Owner additionally
argues that the Examiner’s further reliance on Ovaska ’204 does not cure the
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

21
deficiency allegedly associated with the combination of Schröder and
Ovaska ’857, as applied to claim 1. Id. at 24. This argument is unpersuasive
or any error in the obviousness rejection of claims 4 and 7 for the reasons set
forth above in relation to claim 1.
Owner additionally argues that “it is inappropriate to assume that the
connection between the ‘matching computer’ of Ovaska ’204 with a drive
line or car indicator line can be applicable to the adapter of Ovaska ’857.”
Id. This argument is unpersuasive because Owner presents insufficient
evidence or explanation for why such an assumption would be inappropriate.
Id. As such, Owner’s conclusory and unsupported attorney argument does
not rebut the Examiner’s conclusions adequately.
In further regard to claim 7, the Examiner additionally rejects claim 7
as obvious over Schröder, Ovaska ’857, and Ichioka. E.g. RAN 11. Owner
presents similar arguments for this rejection. Specifically, Owner argues
that Ichioka does not compensate for the alleged shortcomings of Schröder
and Ovaska ’857. PO App. Br. 25. This argument is unpersuasive because
the District Court has already found that the prior art relied upon in litigation
does render claim 1 obvious, and as such, there is no “shortcoming” for
which Ichioka needs to compensate.

CLAIMS 12–14 AND 24–26
Owner argues the nonobviousness of claims 12–14 and 24–26 for the
same reasons pertaining to claim 1. PO App. Br. 25. Owner additionally
notes that the Examiner erred with respect to these claims because these
claims set forth the limitations “the elevator control being non-responsive to
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

22
signals from the hall call transmitters and the car call transmitters of the
elevator installation at least during part of the modernization process in
which the up-down elevator control system is converted to the destination
call control system” and a modernizing unit “converting said at least one
destination signal into at least one call report and generating said at least one
call report to be transmitted to the elevator control controlling the elevator
during the modernization process.” Id.
Owner argues in this regard “that the Examiner has relied upon an
improper obvious analysis by comparing the original claims to the new
claims and not considering each of the new claims as a whole.” Id. at 26.
Owner then proceeds, though, to reiterate why the references allegedly do
not teach the limitations of claim 1, but Owner does not present any
arguments for why the scope of the new claims’ limitations raise any issues
that are separate and distinct from those arguments relevant to claim 1. Id.
Accordingly, this argument is not persuasive. “A statement [that]
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.” 37 C.F.R. § 41.67(c)(1)(vii).

CLAIMS 15–23 AND 27–35
Owner argues that claims 15–17 and 27–29 are not obvious for the
reasons set forth in relation to claims 4 and 7. PO App. Br. 27. Owner
argues that claims 18–20 and 30–32 are not obvious for the reasons set forth
in relation to claims 1, 10, and 11. Id. Owner argues that claim 30 is not
obvious for the reasons set forth in relation to claims 1 and 18. Id. Owner
argues that claims 19–20 and 31–32 are not obvious for the reasons set forth
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

23
in relation to claims 2 and 3. Id. Owner argues that claims 21–23 and 33–
35 are not obvious for the reasons set forth in relation to claims 4, 7, and 18.
Id. at 28.
These arguments are not persuasive for the reasons set forth above in
relation to claims 1, 4, 7, 10, and 11.

DECISION
The Examiner’s decision rejecting claims 1–4, 7, and 10–35 is
affirmed.
We designate our affirmance of the obviousness rejections of claims
1–4, 7, and 10–35 under 35 U.S.C. § 103 as constituting new grounds of
rejection pursuant to our authority under 37 C.F.R. § 41.77(a).
Section 41.77(b) provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.” That section also provides that
Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal proceeding
as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record. The request for rehearing must address any new ground
of rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which
rehearing is sought.
Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

24
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED
37 C.F.R. § 41.77(a)

Appeal 2015-004459
Reexamination Control No. 95/002,222
Patent 6,892,861 B2

25
Patent Owner:

STROOK & STROOCK & LAVAN LLP
180 MAIDEN LANE
NEW YORK, NY 10038

Third Party Requester:

OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
1940 DUKE STREET
ALEXANDRIA, VA 22314