Ex Parte Aulanko et al

Patent Trial and Appeal Board

Feb 22, 2013

10452188 (P.T.A.B. Feb. 22, 2013)

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.
10/452,188 06/03/2003 Esko Aulanko 8959-000003/US 8791
30593 7590 02/22/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
KRUER, STEFAN
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
02/22/2013 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
____________________
Ex parte ESKO AULANKO, JORMA MUSTALAHTI,
PEKKA RANTANEN, and SIMO MAKIMATTILA
____________________

Appeal 2010-007006
Application 10/452,188
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, JILL D. HILL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007006
Application 10/452,188

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
22. Appellants’ representative presented oral argument on February 11,
2013.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
The Invention
Appellants’ claimed invention relates to an elevator. Claims 1, 6, 9,
and 21 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An elevator without a machine room, the elevator
comprising:
a hoisting machine;
a set of hoisting ropes;
a traction sheave;
a counterweight;
an elevator car;
counterweight guide rails; and
elevator car guide rails;
wherein the hoisting machine engages the set of hoisting
ropes via the traction sheave,
wherein the set of hoisting ropes includes hoisting ropes
of substantially circular cross-section and having a load-bearing
part twisted from steel wires of circular, non-circular, or
circular and non-circular cross-section,
wherein the hoisting ropes support the counterweight
moving on the counterweight guide rails and the elevator car
moving on the elevator car guide rails,
wherein a cross-sectional area of the steel wires of the
hoisting ropes is greater than about 0.015 mm2 and less than
about 0.2 mm2, and
wherein the steel wires of the hoisting ropes have a
strength exceeding about 2000 N/mm2.

1 This case is related to Patent Trial and Appeal Board appeals 2010-009207,
2011-002984, and 2010-009194. Appellants presented oral argument for all
four cases on this date.
Appeal 2010-007006
Application 10/452,188

3
Evidence Relied Upon
Gladenbeck
Yoo
Miller
Aulanko
Baranda
De Josez
Strbuncelj
de Jong2
Cordonnier
US 4,022,010
US 5,490,577
US 5,899,300
US 6,199,666 B1
US 6,401,871 B2
US 6,412,264 B1
US 6,601,828 B2
US 6,631,789 B1
US 6,667,110 B1
May 10, 1977
Feb. 13, 1996
May 4, 1999
Mar. 13, 2001
Jun. 11, 2002
Jul. 2, 2002
Aug. 5, 2003
Oct. 14, 2003
Dec. 23, 2003

Janovsky, Elevator Mechanical Design Principles and Concepts, Ellis
Horwood Limited, 120 (1987) (hereafter “Janovsky”).

The Rejections
The following rejections are before us on appeal:
I. Claims 1, 2, 12, 13, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Miller, De Josez, and Cordonnier;
II. Claims 3, 5, 8, and 17-19 under 35 U.S.C. § 103(a) as unpatentable
over Miller, De Josez, Cordonnier, and Aulanko;
III. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Miller, De
Josez, Cordonnier, and Strbuncelj;
IV. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Miller, De
Josez, Cordonnier, Baranda, and Janovsky;
V. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Miller, De
Josez, Cordonnier, Baranda, and Janovsky;

2 Though not listed in the Evidence Relied Upon section of the Answer, de
Jong is in several grounds of rejection. See Ans. 3-4; see also, e.g., Ans. 22.
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VI. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Miller, De
Josez, Cordonnier, and Aulanko;
VII. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over
Miller, De Josez, Cordonnier, and Yoo;
VIII. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Miller, De
Josez, Cordonnier, and Gladenbeck;
IX. Claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Miller, De Josez, Cordonnier, and Baranda;
X. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Miller, de
Jong, De Josez, and Cordonnier; and
XI. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over Miller, de
Jong, De Josez, Cordonnier, and Aulanko.

The Examiner also made a rejection under 35 U.S.C. § 112, second
paragraph, for indefiniteness, and a rejection on the ground of nonstatutory
obviousness-type double patenting. See Office Action dated March 31,
2009, at 2-3. However, these rejections are not before us on appeal. See
Ans. 3.

OPINION
The independent claims on appeal each contain the limitations that the
steel wires of the hoisting rope have a cross-sectional area greater than about
0.015 mm2 and less than about 0.2 mm2, and a strength exceeding about
2000 N/mm2.
Each of the eleven rejections before us relies upon the Examiner’s
finding that Cordonnier discloses steel wires having a cross-sectional area
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Application 10/452,188

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and strength as claimed. Ans. 5-6 (citing Cordonnier, col. 1. ll. 15-27); see
also Ans. 8-25 (regarding the remaining rejections). This finding is not
contested.3 See App. Br. 43-59; Reply Br. 7-9.
The Examiner concluded that it would have been obvious to modify
the steel wires of the Miller and De Josez combination to have a cross-
sectional area and strength, as disclosed by Cordonnier, “to facilitate in
supporting a high load capacity within the elevator car.” Ans. 6.
Appellants argue that the Examiner’s conclusion is not supported by a
sufficient rationale because Cordonnier would not have led a person of
ordinary skill in the art to further modify the proposed combination of Miller
and De Josez to reach the claimed subject matter. App. Br. 43-53; Reply Br.
7-9. Specifically, Appellants argue that Cordonnier discloses hybrid steel
cords having both increased endurance, and increased resistance to fatigue-
fretting corrosion as compared to conventional cords. App. Br. 45. Further,
according to Appellants, these properties relate to radial effects on the cords
when used as tires, and not to axial effects, such as for use as an elevator
hoist rope. App. Br. 45.
Cordonnier makes no explicit disclosure related to supporting a high
load capacity within an elevator car. Rather, Cordonnier discloses new steel
cords for tires having improved endurance and fatigue-fretting-corrosion4

3 Because it is uncontested that Cordonnier discloses steel wires having a
cross sectional area and strength within the claimed ranges, the Examiner’s
reasoning that discovery of the claimed range would have been obvious is
inapplicable. See Ans. 6 (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
4 Fatigue-fretting-corrosion is caused by repeated bending or variations of
curvature of tires while rolling that causes the wires to rub against one
another and undergo wear and fatigue. Col. 1, ll. 28-41; see also col. 5, l. 52
- col. 6, l. 25.
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resistance as compared to conventional cords having only carbon steel wires.
Col. 2, ll. 14-37; see also App. Br. 43-53; Reply Br. 7-9.
The Examiner acknowledges the lack of explicit support in
Cordonnier by conceding that Cordonnier “is primarily directed to
reinforcement of tires,” but finds that Cordonnier’s disclosure is applicable
to belts as well. Ans. 28. The Examiner does not address Appellants’
argument that Cordonnier’s disclosures relate to radial effect on the cords
when used as tires and not to axial effects such as for use in an elevator hoist
rope. Id.
Cordonnier’s improved steel cords may be used to reinforce articles
made of plastic and/or rubber, such as belts. Col. 2, l. 66-col. 3, l. 3; see also
col. 1, ll. 5-7; col. 3, ll. 4-10 (emphasizing uses in tires). However,
Cordonnier does not further specify the type of belts referred to. Nor does
the Examiner explain how this general disclosure regarding belts is
applicable to hoisting ropes or belts for elevators.
In light of this, Cordonnier’s disclosures are not explicitly related to
“supporting a high load capacity within an elevator car” and the Examiner
has not adequately explained how a person of ordinary skill in the art would
recognize that Cordonnier’s disclosures are applicable to such use. See Ans.
5-6. Rather than providing articulated reasoning with a rational
underpinning, the Examiner has merely demonstrated that each of the
elements was independently known in the art, See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
As such, we do not sustain the rejection of independent claims 1, 6, 9,
and 21, and their respective dependent claims 2-5, 7, 8, 10-20, and 22.

Appeal 2010-007006
Application 10/452,188

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DECISION
We reverse the Examiner’s decision to reject claims 1-22.

REVERSED

mls