Ex Parte Ach

Patent Trial and Appeal Board

May 31, 2013

12403026 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERNST ACH
____________

Appeal 2011-003727
Application 12/403,026
Technology Center 3600
____________

Before STEVEN D. A. McCARTHY, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ernst Ach (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
Claims 1 and 6 are the independent claims on appeal. Claim 1,
reproduced below with italics for emphasis, is illustrative:
1. An elevator installation, comprising:
an elevator cage;
a drive pulley;
at least one support means formed as a flat belt; and
a drive engine which drives the at least one support
means, which carries the elevator cage, by way of the drive
pulley, wherein the support means has, at least on a running
surface facing the drive pulley, several ribs of wedge-shaped or
trapezium-shaped cross-section which extend parallel in a
longitudinal direction of the support means and further has
several tensile carriers oriented in the longitudinal direction of
the support means, wherein the tensile carriers are sized so that
a total cross-sectional area of all the tensile carriers amounts
to 30% - 40% of a cross-sectional area of the support means.

REFERENCES RELIED ON BY THE EXAMINER
Takahashi US 6,419,605 B1 Jul. 16, 2002
Heinz US 2003/0121729 A1 Jul. 3, 2003
Kopang US 6,609,990 B2 Aug. 26, 2003
Marler US 2005/0103573 A1 May 19, 2005
Göser EP 1 396 458 A2 Mar. 10, 2004

THE REJECTIONS
(1) Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marler and Heinz.
(2) Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marler, Heinz and Kopang.
(3) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marler, Heinz and Takahashi.
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(4) Claims 6, 7, 9 and 10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marler, Heinz, Takahashi and Göser.
(5) Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marler, Heinz, Takahashi, Göser and Kopang.

ANALYSIS
Claim 1 recites the limitation that “a total cross-sectional area of all
the tensile carriers amounts to 30% - 40% of a cross-sectional area of the
support means.” Similarly, claim 6 recites the limitation that “a total cross-
sectional area of all the tensile carriers amounts to at least 30% of a cross-
sectional area of the support means.” These claimed ranges are at the center
of the dispute on this appeal.
Marler discloses that “elevator systems typically include a cab and
counterweight that move within a hoistway to transport passengers or cargo”
and “[a] load bearing member, such as roping or a belt typically moves over
a set of sheaves and supports the load of the cab and counterweight.”
Para. [0002]. Marler also discloses that “[o]ne type of load-bearing member
is a coated steel belt,” that “[t]ypical [steel belt] arrangements include a
plurality of steel cords extending along the length of the belt assembly” and
“[a] jacket is applied over the cords and forms an exterior of the belt
assembly.” Para. [0003]. Marler’s Figures 1 and 2 “schematically illustrate
a belt assembly 20” having “[a] plurality of cords 22 . . . aligned generally
parallel to a longitudinal axis of the belt assembly 20.” Para. [0020]. As
depicted in Figure 1, the cross-section of belt assembly 20 has eleven cords
22. Fig. 1. Marler discloses that “[i]n one example, the cords 22 are made
of strands of steel wire.” Para. [0020]. Marler further discloses that a jacket
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24, preferably comprising a polyurethane-based material, covers the cords
22. Para. [0021]. In para. [0022], Marler discloses the following example:
[0022] The jacket 24 establishes an exterior width and
thickness of the belt assembly 20. In one example, the width
of the belt assembly is 30 millimeters and the thickness is 3
millimeters. In the same example, the cords 22 have a diameter
of 1.65 millimeters. The cords 22 preferably extend along the
entire length of the assembly.
Para. [0022].
The Examiner relies on Marler for the ranges recited in claim 1 and
claim 6. Ans. 4 and 6. The Examiner pertinently finds that Marler discloses
a “sample belt width, height and diameter of tensile carriers, incl. estimated
number of carriers and spacing between said carriers.” Id. at 4 (referencing
Marler, para. [0022], emphasis added). By the reference to “estimated
number of carriers and spacing between said carriers,” we understand the
Examiner to be referring to the eleven cords or tensile carriers schematically
depicted in Marler’s Figure 1 in combination with the cord diameter and belt
dimensions of the example disclosed in par. [0022]. See Final Office Action
mailed Jan. 25, 2010 at 9 (explaining that “as corroborated by the applicant,
Ma[r]ler et al disclose their tensile carriers each comprising approx. 2.4%
the cross-sectional area of their support means, thereby approximately 27%
in total based on eleven (11) tensile carriers as depicted”). The Examiner
reasons that
in that Marler et al disclose a proportion of cross-sectional areas
exceeding that as set forth by the instant invention as a
minimum of 25%,[1] and that the instant invention has not

1 Paragraph [0009] of Appellant’s Specification discloses that “the sum of
the cross-sectional areas of all tensile carriers amounts to at least 25%,
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disclosed the criticality of its preferential range of 30% - 40%, a
lack of criticality of said range ensued, for which a rationale of
optimization and experimentation or an obvious design choice
may apply.
Ans. 11. Alternatively, the Examiner finds that Marler actually describes a
belt assembly having a total cross-sectional area of all the tensile carriers
amounting to at least 30% of a cross-sectional area of the belt. See Final
Office Action mailed Jan. 25, 2010 at 3 and 9; Ans. 4 and 10.
With respect to claim 1, Appellant argues that Marler and Heinz do
not disclose the claimed range “wherein the tensile carriers are sized so that
a total cross-sectional area of all the tensile carriers amounts to 30% - 40%
of a cross-sectional area of the support means.” App. Br. 6. Appellant
concedes that Marler discloses “a ratio of total cross-sectional area of tensile
carriers to the total cross-sectional area of the support means of 27%” (id.
at 7), but argues that the applied references “[do] not describe the cross
sectional area of all the tensile carriers in relation to the total cross-sectional
area of the support means as a result effective variable” and “[a]s such, the
cited references would not motivate one to determine the optimum or
workable ranges of the cross sectional area of all the tensile carriers in
relation to the total cross-sectional area of the support means since this
parameter is not recognized as a results [(sic)] effective variable.” Id.at 7-8;
see also id. at 8-9.
Our reviewing court has stated the applicable legal principles as
follows:
“[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or

preferably 30% to 40%, of the total cross-sectional area of the support
means.” Spec., para. [0009]; see also id. at para. [0038].
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workable ranges by routine experimentation.” [In re Aller, 229
F.2d 454, 456 (CCPA 1955)]. This rule is limited to cases in
which the optimized variable is a “result-effective variable.” In
re Antonie, 559 F.2d 618, 620 (CCPA 1977); see [In re]
Boesch, 617 F.2d [272,] 276 [(CCPA 1980)] (“[D]iscovery of
an optimum value of a result effective variable . . . is ordinarily
within the skill of the art.”).
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)
(emphasis added). The disclosure of values in the prior art that overlap a
claimed range may establish “the general conditions of a claim” within the
meaning of Aller. See Applied Materials, 692 F.3d at 1295 (determining that
“because the prior art disclosed values overlapping the claimed ranges, the
‘general conditions’ of the claim are disclosed”) (citing Aller, 229 F.2d at
456).2 Here, however, the value of 27% disclosed by Marler is outside of
the claimed range of 30% - 40%.
Appellant’s Specification states that:
Through extensive tests there has been ascertained an
arrangement of belt body 15.1 and tensile carriers 22 which, for
a given belt pulley diameter D of approximately 90 millimetres,
a given tensile load and a given permissible alternating bending
stress of the tensile carriers and the belt body material, a
smallest possible total cross-section for a smallest possible
weight of the wedge ribbed belt results. As an important
criterion for a wedge ribbed belt with the stated properties it has
in that case resulted that the proportion of the total cross-
sectional area of all tensile carriers to the cross-sectional area of

2 “Such overlap itself provides sufficient motivation to optimize the
ranges.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)
(citing In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“‘The normal
desire of scientists or artisans to improve upon what is already generally
known provides the motivation to determine where in a disclosed set of . . .
ranges is the optimum combination . . . .’”)).
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the wedge ribbed belt shall amount to at least 25%, preferably
30% to 40%.
(Spec., para. [0038]; see also id., para. [0009]). This passage draws no
distinction in kind between the properties of a support means or belt having
a total cross-sectional area of all the tensile carriers amounting to at least
25%, as opposed to at least 30%, of the cross-sectional area of the belt. The
Specification does not disclose any comparative data to establish any
unexpected superiority over prior art belt assemblies such as Marler’s belt
assembly 20.
The Examiner correctly finds that paragraphs [0009] and [0038] of the
Appellant’s Specification suggest that support means having a ratio of the
total cross-sectional area of all the tensile carriers to the cross-sectional area
of the support means of 27% might be expected to have at least some
properties similar to those of support means having a ratio of 30%-40%.
Nevertheless, without further evidence regarding the level of ordinary skill
in the art, knowledge of facts disclosed in Appellant’s Specification cannot
be imputed to one of ordinary skill in the art at the time of the invention.
See, e.g., W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1547 (Fed.
Cir. 1983) (identifying as error the lower court’s attribution of “that which
only the inventor taught . . . to the prior art”).
We cannot find by a preponderance of the evidence that the value of
27% is close enough to the claimed range that one skilled in the art would
have expected them to have the same properties. See Titanium Metals Corp.
of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (a prima facie case of
obviousness exists where the claimed ranges and prior art ranges do not
overlap but are close enough that one skilled in the art would have expected
them to have the same properties). Nor can we find by a preponderance of
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the evidence that Marler actually describes a belt assembly having a total
cross-sectional area of all the tensile carriers amounting to at least 30% of a
cross-sectional area of the belt.
The Examiner does not appear to cite Heinz, Kopang, Takahashi or
Göser for any teaching which might remedy this deficiency in the teachings
of Marler. Since the Examiner has not shown that Marler discloses the
claimed range “wherein the tensile carriers are sized so that a total cross-
sectional area of all the tensile carriers amounts to 30% - 40% of a cross-
sectional area of the support means,” the Examiner has not articulated
reasoning with some rational underpinning adequate to support the
conclusion that the subject matter of independent claims 1 and 6 would have
been obvious. For this reason, we do not sustain the rejection under § 103(a)
of claims 1 and 2 as being unpatentable over Marler and Heinz; of claim 3 as
being unpatentable over Marler, Heinz and Kopang; of claims 4 and 5 as
being unpatentable over Marler, Heinz and Takahashi; of claims 6, 7, 9 and
10 as being unpatentable over Marler, Heinz, Takahashi and Göser; or of
claim 8 as being unpatentable over Marler, Heinz, Takahashi, Göser and
Kopang.
Accordingly, we not sustain the rejections of claims 1-10 as being
unpatentable under 35 U.S.C. § 103(a).

DECISION
We reverse the rejections of claims 1-10.

REVERSED
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