Ex Parte Green

Board of Patent Appeals and Interferences

Mar 30, 2009

11128471 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DILLARD HAIRSTON GREEN
____________

Appeal 2008-3914
Application 11/128,471
Technology Center 3600
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Decided:1 March 30, 2009
____________

Before WILLIAM F. PATE III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/128,471

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STATEMENT OF THECASE

This is an appeal from the final rejection of claims 1, 3, 4, 6, 7, and
9-20. These are the only claims in the application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and
134.
The claimed subject matter is directed to a compensating cable for an
elevator.
Claims 1 and 10, reproduced below, are further illustrative of the
claimed subject matter.
1. A compensating cable comprising:

a second portion adapted to be operably engaged with [a]
counterweight; and

a first portion adapted to be operably engaged with a
lower side of an elevator car and with the second portion via a
substantially catenary arcuate portion disposed between the first
and second portions, the substantially catenary arcuate portion
defining a radius configured such that the first portion operably
engages the lower side of the elevator car at a balance point
thereof so that the elevator car is substantially balanced about
the balance point.
10. A compensating cable adapted to be operably engaged with an
elevator car, the compensating cable comprising:
a core layer;
a first sheath layer disposed about the core layer and comprising
a first polymeric material having a first hardness;
a second sheath layer disposed about the first sheath layer and
comprising a second polymeric material having a second hardness;
and
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a third sheath layer having a substantially circular outer
cross-section and disposed about the second sheath layer, the
third sheath layer comprising a third polymeric material having
a third hardness, such that the relative first, second, and third
polymeric materials of the compensating cable cause the
compensating cable to form a substantially catenary arcuate
portion having a radius no greater than a selected maximum
loop radius.
REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Walters US 3,823,253 Jul. 9, 1974
De Angelis US 5,834,942 Nov. 10, 1998
Otsuka US 6,488,125 B1 Dec. 3, 2002
Strauss2 US 6,837,340 B2 Jan. 4, 2005

REJECTIONS
Claims 1, 3, 4, 6, 7 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Otsuka.
Claims 10, 11 and 13-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Otsuka in view of De Angelis and Walters.
Claims 12 and 18-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Otsuka in view Walters and further in view of Strauss.

2 Due to an oversight, the patent to Strauss appears to have been left off the
list of references on page 2 of the Answer. The Examiner has continued to
rely on it in the rejection of claims 12 and 18-20.
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ISSUE
The issue for our consideration in this appeal is whether the Appellant
has established that the Examiner erred in rejecting the claims on appeal on
the basis of obviousness.

FINDINGS OF FACT
1. Otsuka discloses an elevator with a compensating cable. As shown in
a side view, Fig. 1a, an elevator car 1 is suspended from motor sheave 6 and
deflector sheave 6a, with the elevator cable 3 attached to counterweight 2.
Col. 3, ll. 35-40. Suspended from the bottom of the elevator is an elevator
compensating cable which has a first portion 31, curved portion 30, and a
second linear portion 32, attached to the bottom of the counterweight. Col.
3, ll. 40-49. Fig 1(a) is a side view and there are actually two compensating
cables 31, attached to the bottom of the elevator car 1, one hidden from view
by the other. The cables 31 are shown attached generally to the center
portion of the elevator car. This is certainly not an off-center position
nearest the counterweight in the hoistway as Appellant describes the prior
art. See Spec. 1:16-20. Furthermore, there is no reason to suspect that the
attachment points have been selected to unbalance the car compensating
cable system. The curved portion 30 of the compensating rope is suspended
in a generally catenary arcuate portion. Fig. 1a.
2. De Angelis discloses a synthetic fiber cable for elevator use which
includes an integral system to tell when a cable is ready for replacement.
The cables are comprised of an aramide fiber. See col. 1, ll. 16-18 and col.
2, ll. 36-41. Figures 2 and 3 show the makeup of the synthetic fiber cables.
A protective sheath 12 surrounds an outermost strand layer 13. See col. 3, ll.
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42-52. A friction reducing support sheath 15 is applied between the middle
strand layer 14 and the outermost strand layer 13. Id. An inner strand layer
16 and a cable core 17 are arranged within metal strand layer 14. Id. Each of
the strands 18 are twisted from individual aramide fibers, and are
impregnated with polyurethane. Id.
3. Walters discloses a stretchable electrical conductor cable which
maintains its conductive properties when the cable is stretched by as much
as 300% and relaxed to its original relaxed length. See col. 1, ll. 10-22. It
does not appear that Walters is intended for load bearing situations.
4. Strauss discloses elevator compensation weights and elevator systems
and mentions prior art having compensating weight in cable form. See col. 1,
ll. 38-43. The prior art compensating weight is said to contain a mixture of
metal particles and plastic material. Id. Strauss’ own disclosure is that metal
particles have disadvantages in this environment, and therefore metal salts
are a preferable substitute. These salts are mixed with the plastic material to
make the wire ropes or chains. See col. 2, ll. 56-67. Strauss also prefers the
materials of the carrying organ to be selected from steel, iron, polyamides,
aramides or carbon fiber. See col. 4, ll. 22-23
5. The claim term “balance point” has not been defined in Appellant’s
specification.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
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127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. 398 at ___, 127 S. Ct. at
1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing Keller, 642 F.2d at 425 (CCPA 1981)).
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ANALYSIS
Claims 1 and 3
Although Appellant has argued claims 1, 3, 4, 6, 7, and 9 together,
they are directed to different inventions. Claim 1 is a compensating cable.
Claim 4 is the combination of a cable, an elevator car, and a counterweight.
Claim 7 is a method. Therefore, we will consider these claims seriatim.
Our first issue for analysis is the claim construction issue regarding
the claim term “a balance point.” While we acknowledge that Appellant’s
Specification defines the term “centerline”, and Appellant’s originally filed
claims were directed to the centerline, it appears that Appellant has intended
to broaden the terminology by deleting the centerline language and replacing
it with “balance point.” A proper construction of the term is not simple. The
balance point is not otherwise described, and the terminology using the
article -a- implies that there may be more than one balance point associated
with the lower side of the elevator car.
We have a mandate to give a claim its broadest reasonable
interpretation consistent with the specification. We are of the view that the
claim term “a balance point” is a broad term and that there are many balance
points associated with the floor of the elevator car in the Otsuka reference
depending upon elevator car loading. Furthermore, it is our finding of fact
that there is no reason to suspect that the cables are not attached to the
elevator at other than balance points and that one of ordinary skill in this art
would not intentionally unbalance the elevator system. Therefore, it is our
conclusion that the Otsuka patent discloses attaching the compensating
cables to the elevator at balance points, if claim 1 is construed to require a
connection to an elevator at all.
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We note Appellant’s argument that the compensating cable of claim 1
recites the cable engaging the lower side of the elevator car at a balance
point. We note the Examiner’s response that claim 1 does not positively
recite an elevator car. It is directed to the invention of a compensating cable.
Thus, we agree with the Examiner that with respect to claim 1, the exact
attachment point of a claimed compensating cable on an elevator car is an
intended use. Secondly, the claim implies that there are multiple balance
points on an elevator car. Inasmuch as Otsuka is concerned with swaying,
unpleasant noise and the vibration of an elevator car, one of ordinary skill
would have found it obvious to connect the compensator at a balance point
of an elevator car if an elevator car could be said to be claimed in claim 1.
Appellant further argues that Otsuka does not disclose maintaining a
balance at the center line of the elevator car. We note however, that
Appellant’s base claim does not mention the center line of the elevator car.
Therefore, this argument is unpersuasive.
Appellant further argues that Otsuka teaches away from providing a
compensating cable at a first portion adapted to operably engage the lower
side of the car at the balance point thereof, because Otsuka has two
compensating ropes. Inasmuch as our claim construction is that there may
be more than one balance point on the elevator, that the balance point can
move based on elevator loading, and the balance points have not been
otherwise defined in the claim 1, both of Otsuka cables could be said to be
attached to the elevator at balance points. As a matter of fact, the cables can
be equidistant on either side of another balance point.
Appellant’s last argument is that the claim 1 allows for a single
compensating cable to be operably engaged with the elevator car.
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Discounting for a moment the fact that claim 1 is directed to merely a cable
instead of an elevator with a compensating cable, nothing in the base claim
restrict the claims to a single strand or individual cable. All of Appellant’s
claims are in open-ended “comprising” terminology.
Finally, Appellant argues that there is no teaching, suggestion or
motivation for modifying the Otsuka reference. The Supreme Court has
stated in KSR that a strict reliance on a teaching, suggestion, and motivation
test is incompatible with its precedent concerning obviousness. KSR, 550 US
at __, 127 S.Ct. at 1741.
Claims 4 and 6
Claim 4 is directed to an elevator system including an elevator car, a
counterweight and a compensating cable. The claim includes a definition of
“balance point.” The claim recites “an elevator car comprising a lower side,
the lower side defining a balance point;…” We specifically note that the
defining language lacks an adverb such as -thereon- or -therein-.
Accordingly, the broadest reasonable interpretation of claim 4 is that the
floor or lower side of the elevator car is a balance point. We note that
balance point is not otherwise defined in the claim, and it has not been
defined in Appellant’s Specification. Otsuka discloses attaching a
compensating cable to the floor of an elevator. Finding 1. Otsuka further
discloses a cable with a substantially catenary arcuate portion. Id. Otsuka
would have rendered the subject matter of claim 4 prima facie obvious.
Claim 6 falls with claim 4.

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Claim 7
Claim 7 is directed to a method including the step of forming a
catenary in a compensating cable to allow the first portion to operably
engage a balance point on the bottom of the elevator car. Otsuka discloses a
compensating cable that is formed in a substantially catenary arcuate
portion. Finding 1. The claim does not actually claim a connecting step or
require connection to the elevator. It merely states that the shape of the cable
is to allow connection at a balance point. The cable of Otsuka is formed in
the required shape.
Claims 10, 11, and 13-17
We note that claims 10, 11 and 13-17 are argued as a single group, so
we choose claim 10 as the representative claim, and claims 11 and 13-17
will stand or fall with claim 10. With respect to the rejection of claim 10, the
claim is directed to a compensating cable formed of first, second, and third
polymeric materials and having a radius no greater than a selected maximum
loop radius. The claim does not otherwise define what the radius is selected
to be. Otsuka has been described above. De Angelis teaches a flexible cable
with a core layer, a first sheath, a second sheath, and a third sheath, all of
polymeric material which would naturally have a loop radius when
suspended by two ends to form a catenary. This is all that the claim requires.
Appellant argues that there is no teaching, suggestion or motivation
for using the De Angelis cable as a compensating cable. On the contrary, De
Angelis is specifically disclosed as useful for elevator cables, so use of the
De Angelis cable in the compensation system of Otsuka is simply the
substitution of one known element for another to obtain predictable results.
Note that we have not used Walters as a basis for this obviousness rejection,
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and we agree with Appellant that the Walters reference is unsuitable for
elevator use.
Appellant argues that De Angelis extends vertically without forming
an arcuate portion as shown in Figure 1 of the patent. We regard this as an
individual attack on De Angelis when the rejection is based on a
combination of references. However, Appellant cannot negative
obviousness by resorting to such an individual attack. Merck at 1097.
Claim 12
Appellant argues claims 12 and 18-20 under one heading on page 8 of
the Brief. However, claim 12 is actually argued apart from claims 18-20.
Claim 12 is directed to a cable wherein the hardnesses of all three polymeric
materials are claimed as about 84 Shore A. Neither Otsuka, Strauss, nor
Walters describes the hardnesses of their polymeric materials. The Examiner
acknowledges this limitation at page 6 of the Answer but never indicates
where this limitation is to be found in the prior art. Since this limitation is
not in the prior art, we reverse the § 103 rejection of claim 12.
Claims 18-20
These claims are argued together. The Appellant relies on the same
arguments made for patentability of claim 10, from which claims 18-20
depend. For the reasons stated supra, we are not persuaded as to the
patentability of claim 10, and thus we likewise fail to find error in the
Examiner’s rejection of claims 18-20. Additionally, we find that Strauss
discloses materials that satisfy claim 18. Strauss teaches a compensating
cable of polyamides or aramides. Finding 4. As noted above, it would have
been obvious to use these materials in the compensating cable of Otsuka.

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CONCLUSION OF LAW
The Appellant has not established that the Examiner erred in rejecting
claims 1, 3, 4, 6, 7, and 9 as unpatentable under § 103.
The Appellant has not established that the Examiner erred in rejecting
claims 10-11 and 13-17 as unpatentable under § 103.
The Appellant has not established that the Examiner erred in rejecting
claims 18-20 as unpatentable under § 103.
The Appellant has established that the Examiner erred in rejecting
claim 12 under § 103.
ORDER
The rejections of claims 1, 3, 4, 6, 7, 9-11, and 13-20 are affirmed.
The rejection of claim 12 is reversed.

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) (2007).

AFFIRMED-IN-PART

Vsh

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