Ex Parte Ach

Patent Trial and Appeal Board

Jan 24, 2017

12450494 (P.T.A.B. Jan. 24, 2017)

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.
12/450,494 02/11/2010 Ernst Ach 11596-0120 7658
20694 7590 01/26/2017
Chiesa Shahinian & Giantomasi PC
ONE BOLAND DRIVE
WEST ORANGE, NJ 07052
EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
patent @ csglaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNST ACH
Appeal 2015-002820
Application 12/450,494
Technology Center 3600
Before JOHN C. KERINS, LEE L. STEPINA, and SEAN P. O’HANLON,
Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ernst Ach (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s April 17, 2014 final decision (“Final Act.”) rejecting claims 16—
20 and 25—34.2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Inventio AG. App.
Br. 1.
2 Claims 1—15 are canceled, and claims 21—24 are withdrawn from
consideration. Id. at 2.
Appeal 2015-002820
Application 12/450,494
SUMMARY OF INVENTION
Appellant’s claimed invention is directed to an elevator belt. Spec.
12.3 Claim 16, the sole independent claim on appeal, is reproduced below
from page 12 (Claims Appendix) of the Appeal Brief:
16. An elevator belt, comprising:
a belt body made from a first material;
a tube arrangement made from a second material, the
tube arrangement comprising at least one tube embedded in the
belt body, an outer surface of each tube of the tube arrangement
directly adjacent to, and entirely encased by, the belt body; and
a tensile force carrier arrangement having at least one
tensile force carrier, the at least one tensile force carrier
disposed within the at least one tube of the tube arrangement,
the at least one tensile force carrier completely encased within
the at least one tube of the tube arrangement, wherein each
tensile force carrier of the tensile force carrier arrangement is
separated from the first material by each respective tube of the
tube arrangement,
wherein the second material is less susceptible to stress
concentrations than the first material.
REJECTIONS4
Claims 16—20 and 26—34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Baranda (US 6,295,799 Bl, iss. Oct. 2, 2001).
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baranda and Ach ’958 (US 2004/0216958 Al, pub. Nov.
4, 2004).
3 Citations herein to the Specification refer to the Substitute Specification
filed on September 28, 2009.
4 The rejection of claim 16 as being anticipated by Kinoshita (US 6,132,328,
iss. Oct. 17, 2000) has been withdrawn. Ans. 3.
2
Appeal 2015-002820
Application 12/450,494
ANALYSIS
Anticipation Rejection
The Examiner finds that Baranda discloses all of the elements of
independent claim 16, including, inter alia, a belt body (coating layer 28)5, a
tube arrangement (a plurality of center strands 200 in cord 26) including at
least one tube (an individual center strand 200), and a tensile force carrier
arrangement (a plurality of center wires 202 and corresponding outer wires
204 in cord 26)) including at least one tensile force carrier (an individual
center wire 202 and corresponding outer wires 204). Final Act. 2—3 (citing
Baranda 3:54, 5:19-22, Figs. 2, 5, 6).
Appellant traverses, arguing, inter alia, that “Baranda elements 202
and 204 are not equivalent to the tensile force carriers of claim 16 and
should not be construed as such.” App. Br. 8. Continuing, Appellant asserts
that “Specification paragraph [0025] defines tensile force carriers as being
‘in the form of wire ropes made from stranded wires or wire strands,’” and
argues that “[a]s such, the tensile force carriers of claim 16 should be
considered equivalent to Baranda cord 26.” Id. We understand Appellant to
be arguing that because Baranda’s cords 26 comprise outer strands 210
(which include wires 206, 208) twisted around center strand 200 (which
includes wires 202, 204), wires 206, 208 forming outer strands 210 must
also be construed as part of the recited tensile force carrier arrangement.
Similarly, Appellant also argues that “Baranda describes only the
central strand of a cord being encased in a polymer jacket. Baranda does not
disclose the entire cord being encased in a polymer jacket.” App. Br. 6.
5 Parentheticals refer to the terminology of Baranda.
3
Appeal 2015-002820
Application 12/450,494
Continuing, Appellant asserts that, “[a]s such, Baranda does not disclose
‘wherein each tensile force carrier of the tensile force carrier arrangement is
separated from the first material by each respective tube of the tube
arrangement’ as recited in claim 16.” Id. Appellant also argues that “each
tensile force carrier of the belt is required to be separated from the belt body
by a tube.” Reply Br. 3.
We are persuaded by Appellant’s arguments. The Examiner’s
conclusion that only Baranda’s center strand 200, to the exclusion of outer
strands 210, corresponds to the recited tensile force carrier arrangement is
premised on the Examiner’s determination that “[outer strands] 210 are
construed to be part of the belt body [(coating layer 28)].” See Ans. 6; see
also id. at 3^4. We agree with Appellant (see, e.g., Reply Br. 2) that this
determination is in error. Baranda discloses that outer strands 210 are
formed by wires 206, 208. Baranda 4:53—56. Seven metallic wires (e.g.,
wires 206, 208) are twisted together to form a strand (e.g., strand 210), and
seven strands (e.g., strands 200, 210) are twisted together to form cord 26.
Id. at 3:54—56. A plurality of such metallic cords, which are preferably
formed of a high carbon steel, are disposed within coating layer 28, which is
preferably formed of a polyurethane material. Id. at 3:52—61, 6:13—14.
Thus, a person of ordinary skill in the art would recognize that outer strands
210 are not part of coating layer 28 as determined by the Examiner, but
rather are tensile force carriers twisted about and working in conjunction
with center strand 200. We further agree with Appellant that because
Baranda’s outer strands 210 are not encased by jacket 212, they are not
“separated from the first material” as required by claim 16.
4
Appeal 2015-002820
Application 12/450,494
Accordingly, we do not sustain the rejection of independent claim 16
as being anticipated by Baranda. Regarding dependent claims 17—20 and
26—34, Baranda is not relied upon by the Examiner in any manner that
would remedy the deficiencies noted above with respect to the rejection of
independent claim 16. The rejection of claims 17—20 and 26—34, therefore,
is not sustained.
Obviousness Rejection
The Examiner determines that claim 25 is unpatentable over Baranda
and Ach ’958, incorporating the findings and determinations regarding
Baranda as made with independent claim 16. Final Act. 7. Because claim
25 depends from claim 16, and the Examiner’s use of Ach ’958 with respect
to claim 25 does not remedy the deficiencies noted above with respect to
claim 16, we likewise do not sustain the Examiner’s rejection of claim 25.
DECISION
The Examiner’s decision to reject claims 16—20 and 25—34 is
reversed.
REVERSED
5