Ex Parte Howard et al

Board of Patent Appeals and Interferences

Aug 21, 2012

10585386 (B.P.A.I. Aug. 21, 2012)

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.
10/585,386 07/06/2006 Carl Q. Howard 60469-093 PUS1;
PA000.051
2994
7590 08/21/2012
David J Gaskey
Carlson Gaskey & Olds
Suite 350
400 W Maple Road
Birmingham, MI 48009
EXAMINER
HESS, DOUGLAS A
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
08/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL Q. HOWARD, ANDREAS STUFFEL,
LARRY W. HARDIN, and GOLDINO S. ALVES
____________

Appeal 2010-007882
Application 10/585,386
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/585,386

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STATEMENT OF THE CASE
Carl Q. Howard et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 16-251 under 35 U.S.C. § 103(a)
as unpatentable over Soldat (US 5,042,641; iss. Aug. 27, 1991). The
Examiner has allowed claims 1-3 and 5-11, and Appellants have cancelled
claims 4 and 12-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention relates to “reducing sound in passenger
conveyer systems.” Spec. 1, l. 6. Claims 16 and 21, reproduced below, with
emphasis added, are representative of the subject matter on appeal.
16. A method of reducing sound in a conveyer system having
a plurality of steps with a spacing at an interface between the
steps comprising:
forming a sound transmission reducing member on at
least one of the steps as a part of the one of the steps and made
of the same material as the one of the steps to at least partially
obstruct a sound pathway through the spacing.

21. A passenger conveyor system comprising:
a first step;
a second step adjacent the first step with a spacing at an
interface between the first step and the second step; and

1 Appellants originally appealed the rejection of claims 1-3, 5-11, and 16-25
under 35 U.S.C. § 112, second paragraph, and the rejection of claims 1-3
and 5-11, and 16-25 under 35 U.S.C. § 103(a) as unpatentable over Soldat.
App. Br. 3. However, the Examiner withdrew the rejection of claims 1-3, 5-
11, and 16-25 under 35 U.S.C. § 112, second paragraph, as being indefinite
(see Examiner’s Answer, mailed Mar. 20, 2009, at 3), and the rejection of
claims 1-3 and 5-11 under 35 U.S.C. § 103(a) as unpatentable over Soldat
(see Examiner’s Answer, mailed Jul. 30, 2009, at 3).
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a lip formed on at least one of the steps to be a part of the
one of the steps and made of the same material as the one of the
steps, the lip being positioned relative to the interface to at
least partially obstruct a sound pathway that includes the
spacing such that the lip is operative as a sound transmission
reducing member.
App. Br., Clms. App’x.

OPINION
Claims 16, 18, and 20
The Examiner finds that “Soldat teaches the claimed invention as
[shown in annotated figures 1 and 2 attached to a Non-Final Office Action
mailed October 29, 2007];” however, Soldat does not teach its sound
transmission reducing member (brush 2 and bristles 3) as being made of the
same material as one of the steps. Ans. 4.2 The Examiner concludes that
“[i]t would have been an obvious matter of design choice as to the type of
material used for the insulating material/second portion.” Id. The Examiner
also finds that, although “Soldat does not disclose [of] what material his
insulator 2 is made,” the “mere claiming of a type of known material which
possesses insulating properties (all [materials] possess insulating [properties]
of varying degrees) is a matter of personal choice and based on the particular
application at hand[,] . . . the selection of one over another does not provide
a patentable departure over that of Soldat.” Id.
Appellants argue that “[t]here is no such sound transmission reducing
member in the Soldat reference,” and although the “Examiner points to the
brush 2, 3 as a sound transmission reducing member in the Soldat

2 All references to “Ans.” are to the Examiner’s Answer mailed Jul. 30,
2009.
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reference,” “[the brush 2 of Soldat] is not . . . formed as part of one of the
steps nor is it made of the same material as the one of the steps.” App. Br. 6.
Appellants also argue that “[i]t is not possible to change the bristles 3 of the
brush in the Soldat reference to be made of the same material as the steps
without rendering the Soldat reference ineffective for its intended purpose
and unable to achieve its intended result.” Id. 6-7.
In response to Appellants’ arguments, the Examiner determines that
“the mere functional recitation of ‘sound transmission reducing member’ is
clearly met by Soldat even though he does not explicitly state his brush is for
that functional purpose” and that “any material blocking two separate areas
provides some type of sound reduction whether that is the intended purpose
or not.” Ans. 4. The Examiner also determines that “[the brush of Soldat]
does provide this function maybe not to a degree of the applicant’s but
nevertheless to some degree which meets the claim limitations.” Id. 4-5.
The Examiner further determines that “[o]ne could argue the bristles could
be partially made of the same material as the steps (i.e.[,] the base of the
bristles) for strength and durability reasons.” Id. 5.
Appellants reply that “[i]t is not possible to modify the bristles 3 of
the brush 2 . . . of the Soldat reference to provide a sound transmission
reducing member that is formed on a step as part of the step and made of the
same material as the step.” Reply Br. 3. Appellants also argue that the
Examiner’s contention that “bristles . . . partially made of the same material
as the steps (i.e.[,] the base of the bristles) for strength and durability
reasons” is based on impermissible hindsight reasoning and impractical. Id.
Although we appreciate Appellants’ argument that Soldat does not
explicitly disclose a sound transmission reducing member, the Examiner
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appears to take the position that Soldat’s brush 2 with bristles 3 is a member
capable of sound transmission reduction. We agree with the Examiner’s
determination that Soldat teaches each of the claimed structural limitations
including a member capable of sound transmission reduction. Ans. 4. Since
Soldat discloses a brush 2 with bristles 3 that extend toward an adjacent step
1 and across a spacing between adjacent steps 1 (Soldat, col. 2, l. 66 to col.
3, l. 1 and Fig. 2), a person of ordinary skill in the art would have readily
appreciated that the brush 2 and bristles 3 of Soldat at least partially obstruct
the spacing between the adjacent steps 1 and thus, obstruct a sound pathway
through that spacing. See Id., Fig. 2. Accordingly, the Examiner has shown
by a preponderance of the evidence that Soldat discloses the step of
“forming a sound transmission reducing member . . . to at least partially
obstruct a sound pathway through the spacing,” as required by claim 16.
With respect to claim 16’s limitation of “forming a sound
transmission reducing member on at least one of the steps as a part of the
one of the steps,” Soldat also discloses that “[e]ach step 1 includes a tread
1.1” (Soldat, col. 2, ll. 58-59) and that “[p]ositioned under the rear edge of
the tread 1.1 is a brush 2.” Soldat, col. 2, ll. 58-59 and 66-67 and Fig. 2.
Emphasis omitted. Soldat further discloses that the “brush 2 can be solidly
clamped in a holder 4 fastened on the step body, or alternatively be slidably
supported.” Id., col. 3, ll. 4-6 and Fig. 2. Emphasis omitted. Thus, Soldat
discloses its brush 2 is a part of its step 1 and is attached to a step body in
assembling the step 1 so as to satisfy claim 16’s language of “forming a
sound transmission reducing member on at least one of the steps as a part of
the one of the steps.”
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Although we appreciate Soldat does not expressly disclose that the
brush 2 and bristles 3 are made of the same material as one of its steps 1,
Appellants appear to be arguing that the brush 2 and bristles 3 must be
entirely made of the same material as one of the steps. See App. Br. 6 and
Reply Br. 3. However, claim 16 does not require forming a sound
transmission member entirely made of the same material as one of the steps.
Claim 16 instead requires “forming a sound transmission reducing member
. . . made of the same material as . . . one of the steps.” See App. Br., Clms.
App’x. Thus, Appellants’ arguments are not commensurate with the scope
of claim 16 which does not require that both brush 2 and bristles 3 must be
entirely made of the same material as one of the steps.
Additionally, we cannot agree with Appellants that changing the
bristles 3 of the brush 2 of Soldat to be made of the same material as the
steps would render Soldat ineffective for its intended purpose and unable to
achieve its intended result. See App. Br. 6-7. Appellants’ argument that
“[t]he bristles cannot be made of the same material as the steps (e.g., metal)
because that would result in scratching the riser of the step rather than
sweeping it clean” is speculative since Soldat does not disclose that the steps
are made of metal. Even if the steps are made of metal, it is possible that the
brush 2 is the portion made of the same material as the steps and making the
brush 2 metal would not scratch the riser. Thus, we are not persuaded that
the Examiner’s articulated reason, for modifying Soldat’s sound
transmission reduction member to be of the same material as the step, lacks
a rational underpinning. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (holding that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”).
For the reasons supra, we sustain the Examiner’s rejection of claim 16
under 35 U.S.C. § 103(a) as unpatentable over Soldat. With respect to
claims 18 and 20, Appellants have not provided any other substantive
arguments, and thus, the rejection of claims 18 and 20 as unpatentable over
Soldat is likewise sustained. Accordingly, we sustain the Examiner’s
rejection of claims 16, 18, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Soldat.
Dependent Claim 17
Claim 17 depends from claim 16 and recites “attaching another sound
transmission reducing member to the step.” App. Br., Clms. App’x.
Appellants argue that because “[t]here is no benefit to adding another sound
transmission reducing member to the steps in the Soldat reference,” the
Examiner erred in rejecting claim 17. Id. 7-8. Appellants also argue that
Soldat does not indicate attaching an additional sound transmission reducing
member to a step. Reply Br. 5.
We agree with Appellants that the Examiner erred in rejecting claim
17. Soldat discloses that the “brush has bristles adapted to extend across the
width of . . . a front surface of an adjacent escalator step.” Soldat, col. 2, ll.
18-20. Thus, Soldat does not unambiguously indicate attaching another
brush to its step, and the Examiner does not provide any articulated
reasoning for attaching another brush to the step. See Fin. Rej. 3, Ans. 4.
Because we find that the Examiner’s articulated reasoning lacks rational
underpinning and therefore, does not support the legal conclusion of
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obviousness, we cannot sustain the Examiner’s rejection of claim 17 under
35 U.S.C. § 103(a) as unpatentable over Soldat.
Dependent Claim 19
Claim 19 depends from claim 16 and recites “providing sound
absorbing material on a side of the step that faces a sound source.” App. Br.,
Clms. App’x. Appellants argue that “[t]here is no suggestion whatsoever for
how such a material would be useful in the Soldat reference.” App. Br. 8.
Appellants also argue that “add[ing] a sound absorbing material . . . to the
arrangement in the Soldat reference can only be suggested by Appellant[s’]
disclosure and claims.” Reply Br. 5. The Examiner responds that the “brush
of Soldat could be construed as being at the side ‘edge’ of the step which
meets the claim limitation.” Ans. 5.
We agree with Appellants that Soldat fails to disclose “providing
sound absorbing material on a side of the step that faces a sound source,” as
required by claim 19. The Examiner appears to erroneously find that the
same structure of Soldat, i.e., the brush 3, corresponds to both the sound
transmission reducing member of claim 16 and the sound absorbing material
of claim 19. Claims are construed with an eye toward giving effect to all
terms in the claim. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006). See also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases
in claims superfluous). Thus, it is improper to rely on the same structure in
Soldat (the brush 2) as being responsive to two different elements (the sound
transmission reducing member and the sound absorbing material) in claims
16 and 19, respectively. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(claim requiring three separate means not anticipated by structure containing
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two means where one of the two means was argued to meet two of the three
claimed means).
Therefore, we cannot sustain the Examiner’s rejection of claim 19
under 35 U.S.C. § 103(a) as unpatentable over Soldat.
Independent Claim 21
Appellants argue that the “Examiner has not clearly explained
whether the brush 2, 3 or the channel receiving the brush renders [the] lip [of
claim 21] obvious.” App. Br. 8. Appellants also argue that “[t]here is no
way to modify the brush 2, 3 of the Soldat reference to make it consistent
with the lip” and that a “channel that receives the brush 2 . . . is not in a
position to obstruct a pathway that includes the spacing and it is not
operative as a sound transmission reducing member as required by claim
21.” Id. 8-9.
The Examiner responds that the “lip of Soldat 4 at its farthest right
position as shown in figure 2 is ‘positioned relative’ to the interface of
[Soldat’s] two steps as claimed in claim 21.” Ans. 5. Appellants reply that
the “holder 4 in the Soldat reference is beneath the step tread surface and
does not come anywhere near the interface in a manner that would allow it
to at least partially obstruct the sound pathway that includes the spacing”
and that the “holder 4 is so far to the left (according to the drawing) from the
spacing between the steps that any sound heading in an upward direction
toward that spacing will clearly reach that spacing unobstructed by the
holder 4.” Reply Br. 6.
We agree with Appellants that the Examiner has not shown by a
preponderance of the evidence that Soldat discloses “the lip being positioned
relative to the interface to at least partially obstruct a sound pathway that
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includes the spacing,” as called for by independent claim 21. The Examiner
appears to have determined that a holder 4 depicted in Figure 2 of Soldat
corresponds to the lip of claim 21. See annotated Fig. 2 attached to Office
Action mailed Oct. 29, 2007. However, as shown in Figure 2 of Soldat, no
portion of holder 4 is positioned relative to an interface between steps 1 of
Soldat to at least partially obstruct a sound pathway that includes the spacing
between the steps 1. See Soldat, Fig. 2.
Therefore, we cannot sustain the rejection of claim 21 or claims 22-25
dependent thereon under 35 U.S.C. § 103(a) as unpatentable over Soldat.

DECISION
We affirm the Examiner’s rejection of claims 16, 18, and 20 under 35
U.S.C. § 103(a) as unpatentable over Soldat.
We reverse the Examiner’s rejection of claims 17, 19, and 21-25
under 35 U.S.C. § 103(a) as unpatentable over Soldat.
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

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