Ex Parte 6935465 et al

Patent Trial and Appeal Board

May 31, 2016

95002228 (P.T.A.B. May. 31, 2016)

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.
95/002,228 09/13/2012 6935465 002644/0041 1075
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 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 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 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

2
SUMMARY
Background
This proceeding arose from a request for inter partes reexamination of
US Patent 6,935,465 B2, which is entitled “METHOD FOR
MODERNIZATION OF AN ELEVATOR INSTALLATION” (issued to
Paul Friedli on May 17, 2005 from Application 10/316,502, filed December
11, 2002) (“the ’465 Patent”). Inter partes Reexamination Request
95/002,228 (“Request”) was filed September 13, 2012 by Requester W.
Todd Baker.1, 2
The ’465 Patent issued with claims 1–15. PO App. Br. 2. “Original
claims 1–4, 7, 10, and 11 are subject to the instant inter partes
reexamination.” Id. New claims 16–33 were added in the amendment filed
February, 7, 2013. Id. 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 16–33.
PO App. Br. 2. Owner timely appealed. See generally PO App. Br.

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) Patent Owner’s
Response to Office Action of December 7, 2012 Under 37 C.F.R. § 1.945,
filed February 20, 2014) (“PO Response to ACP”); (4) the Right of Appeal
Notice, mailed April 30, 2014 (“RAN”); (5) Patent Owner’s Appeal Brief
Under 35 U.S.C. § 134, filed August 21, 2014 (“PO App. Br.”);
(6) Requester’s Respondent Brief, filed September 19, 2014 (“Resp. Br.”);
and (7) the Examiner’s Answer, mailed February 23, 2015 (incorporating the
RAN by reference) (“Ans.”).
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

3
According to Owner, the present appeal is related to inter partes
Reexamination Control No. 95/002,222, which was requested for
US 6,892,861 B2 (the “’861 Patent”), PTAB Appeal 2014-004459 (“the
’4459 Appeal”). PO App. Br. 1. 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 claims at issue in the ’4459 Appeal are
directed to “[a] device for temporarily operating an elevator installation
during modernization” (’4459 Appeal, claim 1) (emphasis added) and “[a]
system for operating an elevator installation during a modernization process”
(’4459 Appeal, claim 18) (emphasis added), whereas the present claims are
directed to “[a] method of modernizing an elevator installation” (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. 1. 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).
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

4
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
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 in the Summary of Facts 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
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

5
shutting down the elevator bank, thus saving time and money.
Inventio AG, 2014 WL 8260040.
Independent claim 1 is illustrative of the appealed original claims:
1. A method of modernizing an elevator installation having
at least one elevator controlled by at least one elevator control by
way of at least one call report, comprising:
a. installing at least one floor terminal at each floor
served by an elevator controlled by an elevator control for
at least one of the input of destination call reports and for
recognition of identification codes of users;
b. installing at least one computing unit and
connecting and association of destination floors with
recognized once of the identification codes and for the
output of at least one destination signal; and
c. installing at least one modernizing device and
connecting the at least one modernizing device to said
floor terminals and said at least one computing unit for
reading the destination signal, for converting the
destination signal into at least one call report and for
controlling the elevator control by way of the call report.
Independent claim 16 is illustrative of the appealed new claims:
16. A method of modernizing an elevator installation having a
plurality of elevators, at least one of the plurality of elevators
controlled by at least one existing elevator control by way of at
least one call report, the modernization converting an up-down
elevator control system to a destination call control system by
modifying at least one elevator component in the elevator
installation using at least one modernizing device that is not
required to operate once the modernization has been completed,
the method comprising:
a. installing at least one floor terminal at each floor
served by at least one of the plurality of elevators
controlled by the at least one existing elevator control, the
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

6
at least one floor terminal operative to receive an input of
destination call reports or for recognition of identification
codes used to identify users;
b. installing at least one computing unit and
responsively connecting the at least one computing unit to
said floor terminals for evaluating the destination call
reports and association of destination floors with
recognized ones of the identification codes, and for the
output of at least one destination signal during the
modernization converting the up-down elevator control
system to the destination call control system; and
c. installing the at least one modernizing device and
responsivelv connecting the at least one modernizing
device to said floor terminals and said at least one
computing unit for reading the destination signal, for
converting the destination signal into at least one call
report and for controlling the elevator control by way of
the call report during the modernization converting the up-
down elevator control system to the destination call
control system.
The Rejections
Owner lists the following rejections on appeal (PO App. Br. 1–2):3
1. Claims 1–3, 10, 11, 22–24, and 27 stand rejected under 35 U.S.C.
§ 103(a) over Schröder, “Advanced Dispatching,” ELEVATOR WORLD, 1990

3 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
16–33. See Patent Owner’s Response to Office Action of December 7, 2012
Under 37 C.F.R. § 1.945 (filed February 7, 2013) at 3–7. 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 and under 35 U.S.C. § 112, ¶ 1, for lacking
adequate written description support for the full scope of the new claims.
The Examiner also rejected claims 16, 22, and 28 under 35 U.S.C. § 112,
¶ 2, as indefinite. ACP 4–12 (setting forth approximately five general
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

7
(“Schröder”) in view of Ovaska (US 5,352,857, issued Oct. 4, 1994
(“Ovaska ’857”).
2. Claims 4, 7, 25, and 26 stand rejected under 35 U.S.C. § 103(a) over
Schröder in view of Ovaska ’857 and Ovaska et al. (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 16–18, 21, 28–30, and 33 stand rejected under 35 U.S.C.
§ 103(a) over Schröder in view of Ovaska ’857 and Friedli (US 5,689,094;
issued Nov. 18, 1997) (“Friedli ’094”).
5. Claims 19, 20, 31, and 32 stand rejected under 35 U.S.C. § 103(a)
over Schröder in view of Ovaska ’857, Friedli ’094, and Ovaska ’204.
6. Claims 16–33 stand rejected under 35 U.S.C. § 314(a).
7. Claims 16–33 stand rejected under 35 U.S.C. § 112, ¶ 1.
8. Claims 16, 22, and 28 stand rejected under 35 U.S.C. § 112, ¶ 2.

rationales for why various ones of the new claims are broader than the
original claims, are not supported by the ’465 Patent’s original Specification,
or are not reasonably clear).
Owner subsequently attempted to amend new claims 16–33 (see
PO Response to ACP 3–7), but the Examiner denied entry of this claim
amendment (RAN 1–10). Accordingly, we consider on Appeal only the
original version of new claims 16–33, 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 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

8
THE REJECTIONS UNDER 35 U.S.C. § 314
For several reasons, the Examiner rejects various combinations of new
claims 16–33 under 35 U.S.C. § 314(a) for improper broadening. We
address each rationale individually.
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 135, 1349 (Fed Cir.
1998).
I. ELEVATOR CONTROL CONTROLLING MORE THAN ONE ELEVATOR
The RAN incorporates by reference the Examiner’s reasoning as set in
the Action Closing Prosecution. RAN 11 (citing ACP 4–10). The Action
Closing Prosecution, in turn, sets forth the first basis for concluding claims
16–33 improperly broaden the original claims is as follows:
New independent claims 16, 22, and 28, as compared to
’465 patent claim 1, read in part: “installing at least one floor
terminal at each floor served by at least one of the plurality of
[an] elevators controlled by the at least one existing [an] elevator
control.” The new limitation is broader than claim 1 because it
covers a plurality of elevators controlled by a single elevator
control, as opposed to an elevator controlled by an elevator
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

9
control. The district court construed “elevator installation,”
consistent with the specification, to mean “a group of elevators
that convey passengers in a building, where each elevator is
controlled by an elevator control” and rejected Patent Owner’s
proposed interpretation that there could be one elevator control
for the group of elevators. (Emphasis added.) (Request Ex. 3,
pages 36–38.) The district court construed “elevator control” to
mean “an existing device that controls the operation of the
elevator – the identical elevator control that was in place before
modernization,” and rejected Patent Owner’s proposed claim
construction of “a device for controlling the operation of the least
one elevator.” (Request, Ex. 3, pages 39-42.)
ACP 5.
Requester presents essentially the same argument in support of the
Examiner’s rejection. 3PR Resp. Br. 23. The Examiner’s stated reasons and
Requester’s arguments, however, do not persuade us that the new claims are
broader in any manner than original, independent claim 1.
The flaw in the Examiner’s reasoning is that the Examiner is
interpreting claim 1 unduly narrowly. As noted by the Examiner, original
claim 1 does encompass a single elevator controlled by a single controller.
However, claim 1’s breadth is not limited to such embodiments. Claim 1
does not recite an elevator individually controlled by an elevator control.
Nor does it recite an elevator controlled by an elevator control that controls
only that individual elevator.
Rather, claim 1 is written broadly enough so as to also encompass
methods of installing a floor terminal at each floor where an elevator is
controlled either by an individual elevator control or by a group elevator
control. As such, the newly added claims are narrower than claim 1 because
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

10
the new claims only encompass the second noted embodiment—the
embodiment in which an elevator is controlled by a group elevator control.
The Examiner, Owner, and Requester reference the District court’s
claim constructions in relation to the improper-broadening rejection.
RAN 7; PO App. Br. 25; ACP 5 (citing Request Ex. 3 (Inventio AG v.
Thyssenkrupp Elevator Americas Corp., 08-00874-RGA, Document 135
(“Inventio AG Markman Memorandum”) at 36–38, 39–42)); 3PR Resp. Br.
(citing Inventio AG Markman Memorandum at 36–38).
The Board is aware of, and has fully considered, the District Court’s
claim constructions. However, precedent makes clear that the USPTO is not
bound in reexamination proceedings by claim constructions produced by a
court. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1301 (2007). In
reexamination proceedings, the Board is to give unexpired claims their
broadest reasonable interpretation, consistent with the specification. In re
Yamamoto, 740 F.2d 1569, 1571 (Fed Cir. 1984). This standard differs from
that followed by a district court. “In a district court context, [the Federal
Circuit has] said that claims should be construed, if possible, to sustain their
validity.” Id. fn*.
II. ELIMINATING A FUNCTION IS A BROADENING
Contentions
The Examiner finds that “new claim 16 is broader than original
claim 1 because [claim 16] only requires receiving input of destination call
reports or recognition of identification codes, whereas claim 1, as initially
interpreted by the district court, requires both” (emphasis added). RAN 6.
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

11
For similar reasons, the Examiner finds that independent claims 22
and 28 improperly broaden the scope of the original claim 1:
[N]ew independent claim 22, as compared to claim 1,
recites: “the [for] at least one floor terminal operative to receive
an [of the] input of destination call reports [and for recognition
of identification codes of users]” and “connecting the at least one
computing unit to said floor terminals for [at least one of]
evaluating the destination call reports [and association of
destination floors with recognized ones of the identification
codes,] and for the output of at least one destination signal.”
Thus, new claim 22 is broader than original claim 1 because it
only requires receiving destination call reports and evaluating
destination call reports, whereas claim 1, as initially interpreted
by the district court, requires both receiving destination call
reports and recognition of identification codes, and both
evaluating destination call reports and associating destination
floors with identification codes.
Additionally, new independent claim 28, as compared to
claim 1, recites: “the [for] at least one floor terminal operative
to recognize [of the input of destination call reports and for
recognition of] identification codes used to identify [of] users”
and “connecting the at least one computing unit to said floor
terminals for [at least one of evaluating the destination call
reports and] association of destination floors with recognized
ones of the identification codes and for the output of at least one
destination signal.” In other words, new claim 28 is broader than
original claim 1 because it only requires recognition of
identification codes and association of destination floors with a
recognized identification code, whereas claim 1, as initially
interpreted by the district court, requires both receiving
destination call reports and recognition of identification codes,
and both evaluating destination call reports and associating
destination floors with identification codes.
RAN 6–7 (emphasis added).
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

12
Based upon these rationales, the Examiner rejects new claims 16–33
under 35 U.S.C. § 314(a). Id. at 7. From this statement, we infer the
Examiner’s position to be that all of the newly added dependent claims
likewise present the same issue.
Analysis
The Examiner appears to be confusing the breadth of the claimed
functionality of a component used in a recited method, as exists in the
present situation, with the breadth of affirmatively recited method steps.
That is, this is not a situation in which the claims originally set forth two
affirmative method steps of receiving an input of destination call reports and
recognizing identification codes used to identify users, and in which new
claims were then added to omit one of these recited steps. Such a
hypothetical claim amendment would broaden the claims.
However, in the present case, original method claim 1 sets forth a step
of installing a floor terminal that has the functionality or capability of at
least one of inputting destination call reports and the separate functionality
of recognizing identification codes. See claim 1, limitation a. That is, claim
1 is generic to—or reads on—any one of the following three steps:
(1) installing a floor terminal that is capable of inputting destination call
reports; (2) installing a floor terminal that is capable of recognizing
identification codes; and (3) installing a floor terminal that is capable of both
inputting destination call reports and recognizing identification codes.
Claim 16 does not broaden the affirmative method step of claim is
installing a floor terminal. Claim 16 instead narrows the specifically recited
functionality of the floor terminal being installed. That is, claim 16 only
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

13
reads on installing a floor terminal that is capable of inputting destination
call reports.
Stated another way, the language does not change from an original
claim providing all three functionalities A, B, and C to proving only one
functionality A. The present situation instead can be analogized to an
original Markush claim containing three elements A, B, and C, and a later
added claim containing only a single element A.
As such, the Examiner has not demonstrated the elimination of
functionality broadens new claim 16 beyond that of original claim 1. The
same deficiency applies to the Examiner’s reasoning in relation to the
elimination of functionality in claim 22 and 28, as well.
III. “STOPPING THE COMMUNICATION” OF A CONNECTION
INSTEAD OF “INTERRUPTING” IS BROADENING
The Examiner determines that dependent claims 17, 18, 23, 24, 29,
and 30 impermissibly broaden the original claims because these new claims
are “broader than original dependent claims 2 and 3.” RAN 7; accord id. at
7, 8. The Examiner reaches this conclusion based upon the fact that the new
claims recite “stopping the communication of” at least one existing electrical
floor call or car call transmitter connection, whereas the original claims set
forth “interrupting” these connections. Cf., e.g., original claims 2 and 3 with
new claims 17 and 18.
For the purposes of the impermissible-broadening analysis, we need
not decide whether the act of “stopping” is broader than “interrupting.”
Even if we were to assume for the sake of argument this to be true, the
Examiner still would not have established a prima facie showing of improper
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

14
broadening. This is because the Examiner is improperly comparing the
challenged new claims to original dependent claims 2 and 3, which depend
from independent claim 1—not comparing the new claims to the broader
original claim 1, itself. That is, the Examiner, at most, may have
demonstrated that the new claims have an intermediate claim scope relative
to original independent claim 1 and dependent claims 2 and 3.
As such, the Examiner has not established that the new claims are
broader than every claim of the original patent. See Tilloston, 831 F.2d at
1037 n.2 (explaining that the relevant test is whether a new claim “is broader
in scope than the original claims” (in the plural), thereby indicating that
impermissible broadening occurs when the new claim is broader than all of
the original claims).
IV. “RESPONSIVELY CONNECTING” IS NOT BROADENING
The Examiner finds that claims 16–33 impermissibly broaden claim 1
because according to the Examiner, “[n]ew independent claims 16, 22 and
28 change ‘connecting’ to ‘responsively connecting’ in steps (b) and (c).
‘Responsively connecting’ represents a broadening over original claim 1
because it covers a connection that is only connected when it needs to
respond, such as a wireless connection.” RAN 9.
We disagree. Presuming that some objective distinction exists
between the respective claim terms “a connection” and “a responsive
connection,” the former, original term is broader than the latter, new term.
“The doctrine of claim differentiation create[s] a presumption that each
claim in a patent has a different scope. The difference in meaning and scope
between claims is presumed to be significant [t]o the extent that the absence
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

15
of such difference in meaning and scope would make a claim superfluous.”
Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir.
2005)(internal quotation marks omitted).
In the present situation, the new claims’ inclusion of the adjective
“responsive” modifying connection indicates that the unmodified recitation
of “connection” in claim 1 is broader. That is, claim 1 appears to encompass
“unresponsive connections” as well as “responsive connections.”
V. CONCLUSION
For the preceding reasons, the Examiner has not established that any
of the new claims are broader in scope of than all of the original claims.
Accordingly, we do not sustain the rejection of claims 16–33 under
35 U.S.C. § 314(a) for improperly broadening the scope of the original
claims.

THE 35 U.S.C. § 112, ¶1, WRITTEN DESCRIPTION REJECTIONS
Contentions
The Examiner finds (RAN 11–12 (citing ACP 11)) that newly added
claims 16–33 lack adequate written description support for the full scope of
the following newly added language (set forth with emphasis) that appears in
the preamble of each if independent claims 16, 22, and 28: “A method of
modernizing an elevator installation having a plurality of elevators, . . . the
modernizing . . . using at least one modernized device that is not required to
operate once the modernization has been completed.”
The Examiner takes the position that “the ’465 patent describes that
the modernizing device is temporary and is removed once modernization is
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

16
complete.” ACP 11. The Examiner finds that the claim language in
question causes the newly added claims to now read on a wireless
modernization device that may be left in place after the modernization.
See id. The Examiner reasons that “[n]owhere [does] the specification of the
’465 patent describe that the modernization device may be left in place when
modernization is complete. . . . Additionally, there is no wireless connection
disclosed in the specification of the ’465 patent.” Id.
Owner argues that the original claims provide adequate written
description support for the new claims because the original claims’ lack of
any limiting language causes the original claims to be broad enough to
encompass the situation in which the modernizing device is not removed:
[T]he ACP acknowledges that original claim 1 does not recite
that the modernization device is removed once the
modernization is complete. In addition, the ACP notes that
claim 11 specifically recites that the modernizing device is
removed once the modernization is complete. Accordingly,
based on claim differentiation with respect to the original
claims[,] which themselves provide a written description, there
is no requirement that the modernization device operate once the
modernization has been completed because claim 1 is broad
enough to be construed in such a manner and does not require
the modernization device to be removed.
PO App. Br. 29.
Analysis
Owner’s argument is unpersuasive. “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.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

17
The Specification’s lack of disclosure cannot be excused merely
because the original claims are broad enough to encompass the newly
claimed subject matter. “[O]ne cannot disclose a forest in the original
application, and then later pick a tree out of the forest and say here is my
invention.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326
(Fed. Cir. 2000). Rather, the Specification must provide some guides or
“blaze marks” that disclose the claimed invention “‘. . . . specifically, as
something [A]ppellants actually invented.” Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010) (en banc).
Because we find the language of independent claims 16, 22, and 28 to
lack adequate written description support in the original Specification, we
need not address the Examiner’s further finding (see ACP 11) that dependent
claims 17, 18, 23, 24, 29, and 30 present additional language that also lacks
adequate written description support. 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 35 U.S.C. § 112, ¶2, INDEFINITENESS REJECTIONS
For convenience, the full preamble of new claim 16 is reproduced
below (with emphasis added):
16. A method of modernizing an elevator installation having a
plurality of elevators, at least one of the plurality of elevators
controlled by at least one existing elevator control by way of at
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

18
least one call report, the modernization converting an up-down
elevator control system to a destination call control system by
modifying at least one elevator component in the elevator
installation using at least one modernizing device that is not
required to operate once the modernization has been completed,
the method comprising:
Contentions
The Examiner finds claims 16, 22, and 28 to be indefinite for the
following reason:
Examiner agrees with the Requester because, those claims add
the limitation “modifying at least one elevator component in the
elevator installation using at least one modernizing device that is
not required to operate once the modernization has been
completed” in the preamble. It is not clear what “elevator
component” is being modified “using the modernizing device.”
ACP. 12, (citing RAN 11).
Analysis
While claim 16’s preamble may not be the model of clarity, we agree
with Owner that claim 16 is not unreasonably ambiguous when read in the
following manner: “the language ‘modifying’ modifies the ‘at least one
elevator component,’ and the language ‘using the modernizing device’
modifies the term ‘modernization’ and not the verb ‘modifying.’ There is no
basis to construe this claim language in a manner to create confusion, as
opposed to the reasonable broadest interpretation.” PO App. Br. 30.
That is, we deem it reasonably clear that claim 16 is to be interpreted
as follows:
16. A method of modernizing an elevator installation having a
plurality of elevators, at least one of the plurality of elevators
controlled by at least one existing elevator control by way of at
least one call report, the modernization converting an up-down
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

19
elevator control system to a destination call control system by
modifying at least one elevator component in the elevator
installation[, the modernization] using at least one modernizing
device that is not required to operate once the modernization has
been completed, the method comprising . . . .
Accordingly, we do not sustain the Examiner’s indefiniteness
rejection under 35 U.S.C. § 112, ¶ 2.

THE OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. § 103
CLAIM 1–3
Contentions
As noted above, claims 1–3, among others, stand rejected as obvious
over Schröder in view of Ovaska ’857. PO App. Br. 4. 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. at 5. Owner also argues that claims 1 is not
obvious over Schröder in view of Ovaska ’857 because: (a) The term
‘overlay’ does not have a well-known meaning as asserted in the Fortune
Declaration” (id. at 10); (b) “Ovaska ’857’s limited teaching of simple
passive adaptors is not sufficient to make up the deficiencies of Schroder”
(id.at 12), and as such, “[t]here is no motivation . . . to combine the teachings
of Schroder and Ovaska” (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 16.
Owner presents additional arguments in relation to dependent claims 2
and 3. Id. at 18–21.
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

20
Analysis
Initially, we observe that our reviewing court has sustained the
District Court’s independent determination that claims 1–3 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
upon these two references in further combination with the following
documents:
(i) Fortune, “Overlays,” ELEVATOR WORLD (1985), 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).
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

21
(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 1–3 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 1–3. See Gleave, 560 F.3d at 1338 (not reaching other rejections
after upholding an anticipation rejection); see also Beloit Corp., 742 F.2d at
1421 (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).

CLAIMS 4 AND 7
Dependent claims 4 and 7 read as follows:
4. The method according to claim 1 including connecting
with said modernizing device at least one existing electrical drive
line between at least one drive and the elevator control.
7. The method according to claim 1 including connecting
with said modernizing device at least one output for at least one
electrical car indicator line of the elevator control.
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

22
In rejecting these claims as obvious, the Examiner additionally relies
upon Ovaska ’204 for teaching these input signals to, as well as output
signals from, the modernizing device. RAN 26; see also Request 36–43.
Owner argues the nonobviousness of dependent claims 4 and 7 for the
same reasons pertaining to claim 1. PO App. Br. 18. 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 12. Owner
argues that Ichioka’s interface does not constitute a modernizing device.
PO App. Br. 20. Owner further argues that this fact “is important because
the three-way combination of [the cited art] fails to show or suggest [] the
combination of features[], including the feature of the input connected with
‘at least one car indicator line . . . receiving an indication signal.’” PO App.
Br. 21.
These arguments are unpersuasive of error. As explained above, the
District Court has already found that the prior art relied upon in rendering
claim 1 obvious, does teach a modernizing device. Furthermore, Owner’s
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

23
argument that the combination does not teach “at least one car indicator line
. . . receiving an indication signal,” constitutes mere conclusory attorney
argument unsupported by facts or evidence. PO App. Br. 21.

CLAIM 10
Dependent claim 10 recites “performing the steps [of claim 1] for
each elevator car and associated elevator control of an elevator installation in
succession whereby the elevator installation is modernized in a modular
manner.”
Owner argues the nonobviousness of independent claim 10 for the
same reasons pertaining to claim 1. PO App. Br. 18. Owner additionally
argues that the Examiner erred in finding, absent any supporting evidence,
that “it would be common sense to modernize one elevator control at a time
so that the rest of the elevators remain operational.” PO App. Br. 19 (citing
RAN 27). Owner argues that In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir.
2011) stands for the proposition that “common sense, without more, cannot
be relied [upon] in rejecting a claim.” PO App. Br. 19. Owner additionally
argues that the Examiner has failed to demonstrate that modernizing the
elevators one at a time would have been common sense, specifically at the
time of the invention. Id.
Owner’s arguments regarding claim 10’s dependency from claim 1
are unpersuasive of error for the reasons set forth above. Owner’s
arguments regarding Zurko are also unpersuasive. First, Zurko’s holding
regarding the use of common sense was overturned by the Supreme Court.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 403 (2007) (cautioning that
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

24
“[r]igid preventative rules that deny recourse to common sense are neither
necessary under, nor consistent with, this Court’s case law”). More
importantly, though, Owner is incorrect in arguing that the Examiner’s
reliance on common sense was otherwise unsupported. To the contrary, the
Examiner specifically points to Ovaska ’857 for teaching that the elevator
installations can be modernized one at a time. See RAN 27. Owner does not
address the Examiner’s findings in this regard.

CLAIM 11
Dependent claim 11 recites that the modernizing method of claim 1
further includes “modernizing the elevator car, modernizing a drive
associated with the elevator car, modernizing a conveying cable associated
with the elevator car, modernizing the elevator control, and removing said at
least one modernizing device from the elevator installation.”
Owner argues the nonobviousness of independent claim 11 for the
same reasons pertaining to claim 1. PO App. Br. 18. Owner additionally
argues that Ovaska ’857 does not discuss modernizing a conveying cable,
the elevator car, a drive, or the elevator control. PO App. Br. 20.
Owner’s arguments regarding claim 11’s dependency from claim 1
are unpersuasive of error for the reasons set forth above. Owner’s
arguments regarding Ovaska’s alleged shortcomings are also unpersuasive.
The Examiner explains
the modules modernized in Ovaska ’857 specifically include
door control and car panel (functions associated with the elevator
car), as well as motor drive, elevator logic, floor signalization,
and related functions. . . . Moreover, “[t]he elevator-specific
modules are not limited to those mentioned,” and Ovaska ’857
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

25
teaches that in a complete modernization, the rest of the
components of the elevator installation may be modernized . . .
which includes those familiar to one of ordinary skill in the art,
such as a conveying cable.
RAN 28.
Owner does not argue persuasively why any of the claimed
modernizing steps would not have been implied by this disclosure, or at least
rendered obvious to undertake in light of Ovaska ’857’s disclosure that all of
the components may be modernized.

CLAIMS 16–33
Owner argues the nonobviousness of new claims 16–33 for the same
reasons pertaining to claim 1. PO App. Br. 21–22. This argument is
unpersuasive for the reasons set forth above in relation to claim 1.
In separate sections of Owner’s Appeal Brief, Owner then argues that
claims 22–24 and 27 are not obvious for the reasons set forth in relation to
claims 1–3. PO App. Br. 22. Owner argues that claims 25 and 26 are not
obvious for the reasons set forth in relation to claims 4 and 7. Id. Owner
argues that claims 16–18, 21, 28–30, and 33 are not obvious for the reasons
set forth in relation to claims 1 and 16. Id. at 23. Owner argues that claim
28 is not obvious for the reasons set forth in relation to claims 1 and 16. Id.
Owner argues that claims 17, 18, and 21 depend from claim 16 and are not
obvious for the reasons set forth in relation to that claim. Id. Owner argues
that claims 29, 30, and 33 depend from claim 28 and are not obvious for the
reasons set forth in relation to that latter claim. Id. Owner argues that
claims 17, 18, 29, and 30 are not obvious for the reasons set forth in relation
to claims 2 and 3. Id. Owner argues that claims 19 and 20 are not obvious
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

26
for the reasons set forth in relation to claims 16, 4, and 7. Id. at 24. Owner
argues that claims 31 and 32 are not obvious for the reasons set forth in
relation to claims 4, and 7. Id.
These arguments are not persuasive for the reasons set forth above in
relation to claims 1–4, 7, 10, and 11.

CONCLUSIONS
The Examiner’s decision rejecting claims 16–33 under 35 U.S.C.
§ 314(a) for improper broadening is not sustained.
The Examiner’s decision rejecting claims 16–33 under 35 U.S.C.
§ 112, ¶ 1, for lacking adequate written description is sustained.
The Examiner’s decision rejecting claims 16, 22, and 28 under
35 U.S.C. § 112, ¶ 2, for indefiniteness is not sustained.
The Examiner’s decision rejecting claims 1–4, 7, 10, 11, and 16–33
under 35 U.S.C. § 103 as obvious is sustained.

DECISION
The Examiner’s decision rejecting claims 1–4, 7, 10, 11, and 16–33 is
affirmed.
We designate our affirmance of the obviousness rejections of claims
1–4, 7, 10, 11, and 16–33 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
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

27
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 . . . .
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
Appeal 2015-007259
Reexamination Control No. 95/002,228
Patent 6,935,465 B2

28
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)

rvb

Patent Owner:

Stroock & Stroock & Lavan, LLP
180 Maiden Lane
New York, NY 10038

Third Party Requester:

Oblon Spivak McClelland Maier & Neustadt, LLP
1940 Duke Street
Alexandria, VA 22314