Ex Parte Aulanko et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201310990388 (P.T.A.B. Feb. 22, 2013) Copy Citation 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. 10/990,388 11/18/2004 Esko Aulanko 8959-000004/US/COA 6912 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 2010-009194 Application 10/990,388 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 2010-009194 Application 10/990,388 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 23. Appellants’ representative presented oral argument on February 11, 2013.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART, but designate the affirmed rejections as NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b). The Invention Appellants’ claimed invention relates to an elevator. Spec. 1:2. Claims 1 and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 An elevator without a machine room, comprising: a hoisting machine; a set of hoisting ropes; a traction sheave; and diverting pulleys; wherein the hoisting machine engages the set of hoisting ropes via the traction sheave, wherein the set of hoisting ropes has a load-bearing part twisted from steel wires of circular, non-circular, or circular and non-circular cross-section, wherein at least some of the diverting pulleys are larger in diameter than the traction sheave, and wherein a weight of the hoisting machine is at most about 1/5 of a weight of a nominal load of the elevator. 1 This case is related to Patent Trial and Appeal Board appeals 2010-007006, 2011-002984, and 2010-009207. Appellants presented oral argument for all four cases on this date. Appeal 2010-009194 Application 10/990,388 3 Evidence Relied Upon Gladenbeck Wilcox Yoo Aulanko '301 Aulanko '666 Baranda '061 Baranda '871 De Josez Strbuncelj Cordonnier US 4,022,010 US 4,624,097 US 5,490,577 US 5,899,301 US 6,199,666 B1 US 6,364,061 B2 US 6,401,871 B2 US 6,412,264 B1 US 6,601,828 B2 US 6,667,110 B1 May 10, 1977 Nov. 25, 1986 Feb. 13, 1996 May 4, 1999 Mar. 13, 2001 Apr. 2, 2002 Jun. 11, 2002 Jul. 2, 2002 Aug. 5, 2003 Dec. 23, 2003 Lubomir 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, 6, 9, 11-14, 19, 20, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, and Aulanko '666;2 II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Baranda '061; III. Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Cordonnier; IV. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Strbuncelj; 2 Claim 10 is listed in the heading of this ground of rejection, but is not addressed in the body of the rejection, and therefore, we do not consider it subject to this ground of rejection. See Ans. 5-8; Office Action dated July 23, 2009, at 4-7. Appeal 2010-009194 Application 10/990,388 4 V. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, Baranda '871, and Janovsky; VI. Claims 10 and 21 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Aulanko '301; VII. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Gladenbeck; VIII. Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Baranda '871; and IX. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Wilcox. 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 June 23, 2009, at 2-3. However, these rejections are not before us on appeal. See Ans. 33. OPINION Each of the rejections is based at least in part on the Examiner’s proposed combination of Yoo, De Josez, and Aulanko '666. Appellants contend that this proposed combination does not disclose the limitation of independent claims 1 and 23 that the weight of the hoisting 3 All references are to the Examiner’s Answer dated March 30, 2010, unless otherwise specified. Appeal 2010-009194 Application 10/990,388 5 machine is at most about 1/5 of the weight of the nominal load4 of the elevator. App. Br. 36. Specifically, Appellants argue that Aulanko '666 discloses axle load rather than nominal load and therefore does not disclose or suggest the claimed ratio. App. Br. 38-39; Reply Br. 8-9. We construe the limitation at issue, and then examine the prior art in light of that claim interpretation and Appellants’ contention. Independent claims 1 and 23 each call for the weight of the hoisting machine to be at most about 1/5 of a weight of the nominal load of the elevator. Appellants’ Specification states that the size and weight of hoisting machines is a limiting factor in elevator solutions. Spec. 1:4 to 2:8. The claimed invention is intended to improve space utilization in the building and elevator shaft, and reduce the size or weight of the elevator or at least the elevator machine. Spec. 3:5-15. The Specification states that the ratio of hoisting machine weight can be reduced to be at most 1/5 of the nominal load. Spec. 15:29-31. The Specification states that other ratios may be achieved, such as 1/2, 1/6, 1/7, 1/8, and 1/10. See, e.g., Spec. 15:1-6; 15:32 to 16:18. The Specification does not state that any of these ratios produce unexpected results, nor does the Specification state that any of these ratios 4 “Nominal load” is synonymous with “maximum working load,” and refers to the load carrying capacity of the elevator car. See Spec. 4 (as amended August 24, 2009); App. Br. 7 (indicating this amendment was entered); Ans. 3 (indicating Appellants’ statement of the status of amendments in the Appeal Brief is correct). Given this, and the reasons argued by Appellants, we do not agree with the Examiner’s interpretation that “nominal load” as claimed equates to “axle load.” See Ans. 17; App. Br. 25-25; Reply Br. 7- 10. Appeal 2010-009194 Application 10/990,388 6 are critical.5 Rather, Appellants’ Specification merely indicates a general preference for a lower ratio of hoisting machine weight to the nominal load of the elevator. Therefore, the hoisting machine to nominal load weight ratio of claims 1 and 23 is not a critical ratio and was not disclosed or alleged to produce unexpected results; rather, this ratio defines a range (about 1/5 or less) along the spectrum of the ratio of hoisting machine weight to nominal load. While Appellants are correct that Aulanko '666 discloses axle load rather than nominal load, for the reasons that follow, Appellants’ argument does not demonstrate the nonobviousness of claims 1 and 23. See Aulanko '666, col. 2, ll. 61-67. To begin, Appellants’ contention narrowly addresses the distinction between axle load and nominal load, and does not address the reference as a whole. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (the prior art must also be considered as a whole). Aulanko '666 discloses the desirability of reducing elevator hoisting machine size and weight. Col. 1, l. 15 to col. 2, l. 67. Aulanko '666 elaborates that reduced size and weight of the hoisting machine as compared to load capacity makes the machine easy to implement in terms of machine room layout and installation. Col. 3, ll. 48-50. As a specific example of such weight reduction, the weight of the hoisting machine may be reduced 5 At oral hearing, Appellants characterized the results as surprising. Such a line of argument is not contained in the Appeal or Reply Brief, and therefore is not addressed further here. Appeal 2010-009194 Application 10/990,388 7 so that it is at most about 1/8 of a weight of the axle load of the elevator.6 Col. 2, ll. 61-67; see also Ans. 5. In view of Aulanko '666 as a whole, a person or ordinary skill in the art would understand the desirability of reducing the weight of the hoisting machine compared to the axle load, making the machine easier to implement in terms of machine room layout and installation.7 Depending on the portion of axle load attributable to nominal load, a ratio of hoisting weight to axle load of less than 1/8, as disclosed by Aulanko '666, could correspond to a hoisting machine weight to nominal load ratio of at most about 1/5, as claimed. Even if we assume that Aulanko '666 does not disclose the claimed ratio, given that Aulanko '666 teaches the desirability of lowering the hoisting machine weight to axle weight ratio and that nominal load is a contributing factor to axle load, the difference between the reference and the prior art is simply one of range. At most, the claimed subject matter differs only in degree and not kind from the results of the hoisting machine weight reduction approach disclosed by Aulanko '666. Further, Appellants have not alleged, much less shown, that the claimed ratio produces unexpected results or is otherwise critical. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“[E]ven though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges ‘produce a 6 An axle load of 40,000 kg and a hoisting machine weight of 5,000 kg. 7 Appellants concede this point by arguing that these terms were known at the time of the claimed invention. See App. Br. 25-35; Reply Br. 7-9. Appeal 2010-009194 Application 10/990,388 8 new and unexpected result which is different in kind and not merely in degree from the results of the prior art.’”). For these reasons, we affirm the rejection of independent claims 1 and 23 and their respective dependent claims 6, 9, 11-14, 19, 20, and 22 (the claims subject to the first ground of rejection). The claims subject to Rejections II and IV - XI depend from either independent claim 1 or independent claim 23. Appellants repeat the arguments against Aulanko '666 utilized for independent claims 1 and 23, adding that the additional references do not cure the deficiency of the proposed Yoo, De Josez, and Aulanko '666 combination. App. Br. 40-46. As explained in the analysis of claims 1 and 23, supra, there is no deficiency to be cured. Therefore, this line of argument is unconvincing, and we sustain Rejections II and IV - XI. With regard to rejections I, II, and IV-XI, our reasoning differs from, or elaborates on, the reasoning articulated in the Examiner’s rejections. Accordingly, we designate our affirmance a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b) to afford Appellants a full and fair opportunity to react to the thrust of the rejection. Regarding Rejection III, Appellants make an additional argument for claims 3 and 4. Claim 3 depends from claim 1, and adds that the steel wires of the hoisting ropes have a strength greater than about 2300 N/mm2 and less than about 2700 N/mm2. Claim 4 depends from claim 1, and adds 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. The Examiner found, and Appellants do not contest, that Cordonnier discloses steel wires having Appeal 2010-009194 Application 10/990,388 9 strength and cross sectional area within the claimed ranges. Ans. 9-10; App. Br. 40-42; Reply Br. 10-13. The Examiner concluded that it would have been obvious to modify the steel wires of the proposed 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. 10. Appellants argue that the Examiner’s conclusion is not supported by adequate rationale because Cordonnier would not have led a person of ordinary skill in the art to make the proposed modification. App. Br. 40-42; Reply Br. 10-13. 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-corrosion8 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. 19; see also Ans. 5-6. 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 8 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. Appeal 2010-009194 Application 10/990,388 10 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 claims 3 and 4. DECISION We affirm the Examiner’s decision to reject claims 1, 2 and 5-23, but designate that affirmance as NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b). We reverse the Examiner’s decision to reject claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Yoo, De Josez, Aulanko '666, and Cordonnier. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must Appeal 2010-009194 Application 10/990,388 11 exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. … (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation