Ex Parte Fargo

Board of Patent Appeals and Interferences

Feb 23, 2006

09571827 (B.P.A.I. Feb. 23, 2006)

1 Concurrent with the filing of the reply brief (July 26, 2005)
appellant filed an amendment cancelling claim 4 and adding the limitations of
objected to claim 4 to independent claim 3, from which claim 11 depends. In a
subsequent communication from the examiner (August 26, 2005), the examiner
states that the amendment dated July 26, 2005 has been entered, and that only
claim 1 remains on appeal.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD N. FARGO
____________
Appeal No. 2006-0224
Application No. 09/571,827
____________
ON BRIEF
____________
Before NASE, CRAWFORD, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3 and 111. As set forth in the answer,
(page 2) “Claims 2 and 6 have been cancelled. Claims 8-10 are
allowed. Claims 4, 5 and 7 are objected to as containing
Appeal No. 2006-0224
Application No. 09/571,827
Page 2
allowable subject matter, but being dependent upon a rejected
claim.”
We REVERSE.
BACKGROUND
The appellant's invention relates to an elevator with
escalator-like passenger flow (specification, page 1).
Claim 1 is the sole claim on appeal, and is reproduced as
follows:
1. A passenger conveying system comprising:
a plurality of cabs movable between two floors, each of said
cabs having a first door for entering and a second door for
exiting;
said cabs being arranged such that a passenger enters one of
said cabs through said first door in a forward direction at one
of said two floors, and then exits said one of said cabs through
said second door moving in said forward direction at the second
of said two floors; and
said system having at least three cabs, with a control
attempting to keep one cab waiting at each of said two floors
with a third cab moving between said two floors.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claim is:
Kato JP 10-246020A Sep. 14, 1998
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by JP’020.
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Application No. 09/571,827
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Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (mailed June 2, 2005)
for the examiner's complete reasoning in support of the
rejection, and to the brief (filed September 14, 2004) and reply
brief (filed July 26, 2005) for the appellant's arguments
thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of anticipation relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant’s arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Appeal No. 2006-0224
Application No. 09/571,827
Page 4
Upon consideration of the record before us, we make the
determinations which follow. We begin with the rejection of
claim 1 under 35 U.S.C. § 102(b) as being anticipated by JP
(‘020). It is well settled that if a prior art device inherently
possesses the capability of functioning in the manner claimed,
anticipation exists whether there was a recognition that it could
be used to perform the claimed function. See, e.g., In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997). The examiner’s position is set forth on page 3 of
the answer.
Appellant asserts (brief, page 5) that claim 1 requires that
there be at least three cabs with a control attempting to keep
one cab waiting at each of the two floors with a third cab moving
between the two floors. The examiner’s position (answer, page 4)
is that “the limitation a control ‘attempting to’ in claim 1,
line 8 is not a positive recitation, and thus as long as any
elevator systems with a control should be capable of ‘attempting’
to maintain the cabs at each of the two floors with a third
moving between the two floors.” Appellant asserts (brief, page
5) that “the claim clearly requires that a control attempt to
maintain the cabs at each of the two floors with a third moving
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Application No. 09/571,827
Page 5
between the two floors. Whether a control is ‘capable’ of this
or not, is irrelevant. The reference must disclose a control
that is programmed to achieve this feature.
The Japanese reference does not.” Appellant additionally asserts
(reply brief, page 2) that “[t]he claim language is a positive
recitation. That control is ‘attempting’ necessarily limits the
control to one programmed to achieving this goal. There is
nothing in the prior art that discusses any benefit from the
claimed positioning, nor is there any control that would
‘attempt’ to achieve that positioning. Simply, nothing in the
prior art meets this limitation. The Japanese control would not
‘attempt’ to do anything outside its programming.”
From our review of the claim, we find that the language
“said system having at least three cabs, with a control
attempting to keep one cab waiting at each of said two floors
with a third cab moving between said two floors” sets forth a
broad recitation of structure, and is a positive limitation,
albeit broad, that cannot be ignored. Note that to meet the
claim, it is not necessary that the controller of JP(‘020)
actually keep two elevators in place in their floors while moving
a third elevator between the floors. All that is required is
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Application No. 09/571,827
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that the controller be capable of attempting to carry out the
language set forth in the claim. In paragraph 4 of JP(‘020), the
reference discloses that “[i]n the case of this kind of elevator,
when a passenger pushes a button on a given floor to call the
car, a controller controls the hoist in response to said call so
as to send the car to the corresponding floor. If another call
is made at another floor after said call was already made, the
controller moves the car according to the call.” The reference
additionally discloses, as shown in figure 1, that the hoist is
used to move one set of elevators down as the other set is
brought up, and vice versa. As we find no disclosure in
JP(‘020), and none has been brought to our attention by the
examiner, of the system ever being capable of attempting to move
a third elevator between floors while keeping the other two
elevators in place, we are not persuaded by the examiner’s
assertion (answer, page 4) that any elevator system with a
control should be capable of attempting to maintain the cabs at
each of the two floors with a third moving between the two
floors. Accordingly, we find that JP(‘020) fails to anticipate
the language of claim 1. The rejection of claim 1 under 35
U.S.C. § 102(b) is reversed.
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Application No. 09/571,827
Page 7
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 under 35 U.S.C. § 102(b) is reversed.
REVERSED
JEFFREY V. NASE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
Appeal No. 2006-0224
Application No. 09/571,827
Page 8
OTIS ELEVATOR COMPANY
INTELLECTUAL PROPERTY DEPARTMENT
10 FARM SPRINGS
FARMINGTON, CT 06032