Ex Parte Ito

Board of Patent Appeals and Interferences

Jun 11, 2012

11782303 (B.P.A.I. Jun. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KAZUMASA ITO
____________________

Appeal 2010-003144
Application 11/782,303
Technology Center 3600
____________________

Before: KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 7-
19. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
The claims are directed to an emergency brake apparatus for elevator
system. Claim 7, reproduced below, is illustrative of the claimed subject
matter:
7. An emergency brake apparatus for an
elevator system for braking movement of an
elevator cage moving along a guide rail of the
elevator system, the braking apparatus comprising:
a pressing member directly mounted on the
elevator cage and that is pressed against and into
contact with the guide rail in response to an
electrical signal generated in response to abnormal
movement of the elevator cage, the pressing
member being moved at least one of (i) upward
along the guide rail in relation to the elevator cage,
upon braking downward movement of the elevator
cage, and (ii) downward along the guide rail in
relation to the elevator cage upon braking upward
movement of the elevator cage, by a frictional
force between the pressing member and the guide
rail; and
a pressing surface directly mounted on the
elevator cage for braking by contacting the guide
rail in response to movement of the pressing
member against the guide rail.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dunlop
Koppensteiner
Poon
Kangiser
US 1,937,035
US 4,538,706
US 5,230,406
US 6,446,769 B1
Nov. 28, 1933
Sep. 3, 1985
Jul. 27, 1993
Sep. 10, 2002

REJECTIONS
Claims 7, 8, 10, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Poon and Kangiser. Ans. 3.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Poon, Kangiser and Dunlop. Ans. 6.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Poon, Kangiser and Koppensteiner. Ans. 7
Claims 14, 15, and 17-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Poon, Kangiser and Koppensteiner. Ans. 8
Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Poon, Kangiser, Koppensteiner, and Dunlop. Ans. 12.

OPINION
While we have carefully considered Appellant’s allegation that the
ambiguity as to the reference numerals of Poon’s wedges and wedge guides
renders Poon inoperable or non-enabled (App. Br. 8-11), we find this
allegation to be entirely without merit. We agree with the Examiner that in
Poon’s Specification Poon has simply reversed reference numerals 10, 71,
81, 91 and 9, 72, 82, 92. Ans. 13. Thus, we will refer to the structure
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identified by Poon’s reference numerals 10, 71, 81, 91 as “wedges” and the
structure identified by reference numerals 9, 72, 82, 92 as “wedge guides.”
See e.g., Ans. 14. We are also unpersuaded by Appellant’s argument that it
would not have been obvious to update or improve upon the mechanical
speed sensing and brake actuating system of Poon (governor 4, rope 5,
mechanical linkages 8 and push rods 11a-d), by incorporating a brake that
may instead be actuated in response to an electrical signal generated in
response to abnormal movement of the elevator. App. Br. 13-14. Poon
employs pushrods 11a-d to actuate the brake in response to a mechanical
signal from the governor 4. Col. 2, ll. 45-51. The claimed subject matter is
the result of simply substituting an alternate known linear actuator, for
example the solenoid 37 of Kangiser, for Poon’s pushrods, and supplying an
electrical signal in place of a mechanical one. To the extent Appellant
argues this, we note that the claims do not require “pressing surfaces” to
press “directly against the guide rail.” App. Br. 12. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability).
In light of the fact that we are unpersuaded by Appellant’s arguments
discussed above, the critical dispute between Appellant and the Examiner in
this Appeal involves the proper construction of the phrase “directly mounted
on.” App. Br. 12; Ans. 3, 14-15; Reply Br. 3. That phrase is used twice in
independent claim 7 to describe the relationship between both the pressing
member and the pressing surface with the elevator cage. Independent claim
14 contains similar limitations, but in claim 14, the pressing member and the
pressing surface are directly mounted on the balance weight. Independent
method claim 10 only calls for pressing a pressing member that is directly
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mounted on the elevator cage and does not include any steps requiring a
pressing surface.
The Examiner interprets Poon’s elevator car 1 as the claimed
“elevator cage.” The Examiner determined that Poon’s wedges 10,
interpreted by the Examiner as the claimed “pressing member” are “directly
mounted on the elevator cage 1 via linkage 8 and rods 11a and that is
pressed against and into contact with the guide rail 2.” Ans. 3. The
Examiner also determined that Poon’s wedge guides 9, 72, 82, 92,
interpreted by the Examiner as the claimed “pressing surface,” are “directly
mounted on the elevator cage 1.” Ans. 3. Regarding direct mounting, the
Examiner further states, “the wedge guide is mounted in a fixed position
relative to the elevator car and the wedge is mounted so as to be movable
vertically upwardly or downwardly relative to the elevator car . . . figure 1-3
clearly depict wedge and wedge guides directly mounted on the elevator
cage.” Ans. 14-15. The Examiner also asserts that “[u]nder 37 CFR 1.83(a)
the drawings must show every feature of the invention specified in the
claims. Therefore, Applicant’s drawings show[s] every feature of the
invention specified in the claims including a pressing member and a pressing
surface directly mounted on the elevator cage.” Ans. 15. Thus, due to the
presence of intermediate structures in Appellant’s drawings, such as pedestal
12, the Examiner concludes that an interpretation of “directly mounted on”
that allows for the presence of intermediate structures is reasonable. See
Final Rej. p. 12, para. 65.
Appellant argues that Examiner’s interpretation of “directly mounted
on” as including mounting “via” intermediate elements is unjustified as
contrary to normal English usage. App. Br. 12-13. Appellant points out the
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absence of any limitation directed to a structure such as pedestal 12 between
the cage and pressing member or pressing surface. App. Br. 12.
The Examiner presumes that the application complies with the
requirements of 37 CFR 1.83(a) as discussed above and adopts a claim
construction consistent with this presumption. We are unaware of any
precedent sanctioning this approach to claim construction. Rather, the
words of the claim must be given their “broadest reasonable meaning [] in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). If the result of that analysis is a construction that renders the
application not in compliance with 37 CFR 1.83(a) then it is within the
Examiner’s discretion to object to the drawings for that reason.
If the claims are read in isolation, Appellant’s proposed construction
of “directly mounted on” as excluding mounting via intermediate structures
would seem appropriate. However, claims are read, not in isolation, but in
light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed.Cir.2004). The Specification does not describe direct mounting
of the pressing member or pressing surface in haec verba. These limitations
were added to the claims by Appellant’s most recent amendment to the
claims entered on Dec. 3, 2008. In the accompanying remarks, Appellant
stated that descriptive support for these limitations can be found at page 5,
lines 22-25 of Appellant’s Specification. The portion of the Specification
relied on by Appellant for descriptive support of these limitations provides,
in its entirety:
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The emergency brake apparatuses 10 according to the present
invention are fixedly mounted on the elevator cage 3 and the
balance weight 4 at the top ends thereof, respectively, by means
of clamping bolts not shown.
This portion of the Specification mentions only the entire brake
apparatuses 10 as opposed to the pressing member 16, 201 and pressing
surface 17c, 19c, and fixedly, as opposed to directly, mounting on the
elevator cage. The Specification indicates that the pressing surface 17c, by
virtue of being part of grip member 17 is “fixedly secured to the pedestal
12.” Spec. p. 6:20-21, fig. 2. The pressing member 16 is rotatably mounted
on connecting rod 14, which is, in turn, connected to the plunger 11b of
electric solenoid 11. Spec. p. 6:12-20. Solenoid 11 is fixedly secured to a
base or pedestal 12 disposed on a top portion of the elevator cage 3. Spec.
6:1-3.
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA
1971). The test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Particularly where the level of unpredictability is low, the written description

1 In the embodiment depicted in Figure 5, the Specification refers to element
19d as the “pressing member” and element 20 as the “twin-wedge member.”
Appellant refers to element 20 as an example of the claimed “pressing
member.” App. Br. 3. We interpret twin-wedge member 20 as exemplary of
the claimed “pressing member” since according to the claims this structure
must move or be capable of moving up or down along the guide rail—a
capability of twin-wedge member 20.
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requirement does not confine the scope of the claims to specific
embodiments disclosed. In re Smythe, 480 F. 2d 1376, 1383-84 (CCPA
1973). This is true regardless of whether the claims are broader or narrower
than the embodiments described in the original disclosure. See In re Smith,
458 F.2d 1389, 1395 (CCPA 1972).
The Specification does not provide much structural detail of the
pedestal 12. It appears to be simply an unremarkable foundation disposed
on the elevator cage 3 to which the solenoid 11 and grip member 17 are
fixedly secured as discussed above. One of ordinary skill in the art would
understand that Appellant invented a brake regardless of whether the grip
member 17, and therefore the pressing surface 17c, of that brake is fixedly
secured to pedestal 12 or is “directly mounted on” the elevator cage or
balance weight. See e.g., In re Smythe, 480 F. 2d at 1384. If we were to
construe “directly mounted on the elevator cage [or balance weight]” as
precluding the presence of intermediate structures between the pressing
members and cage or balance weight, we cannot say the same of the
disclosed pressing members 16, 20 since they are contained within grip
member 17, mounted on connecting rod 14 affixed to solenoid 11. As
indicated by the dashed lines, these members must have at least two degrees
of freedom relative to the elevator cage, vertically and horizontally as
viewed in figures 2 and 5.2 Spec. 7-8, 10-11. Even without the pedestal 12
present, we fail to see how the Specification would convey possession of a

2 In addressing Poon, Appellant contends that such an arrangement precludes
direct mounting on the elevator car according to Appellant’s proposed
construction: “in Poon, the pressing members, i.e., wedge guides 10,
somehow move relative to an elevator cage.” App. Br. 11. Therefore, those
wedge guides cannot be directly mounted on the elevator cage.
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brake including a pressing member that is mounted on the elevator cage or
balance weight without intermediate elements—the construction of “directly
mounted on” advanced by Appellant.
The Examiner never rejected the claims for failure to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph, so we do
not have the benefit of the Examiner’s or Appellant’s analysis on this issue.
The issue is avoided by virtue of the Examiner construing the term “directly
mounted on” to include mounting via other elements, or by including
additional structures in Poon as portions of the structures considered the
“elevator cage,” “balance weight,” or “pressing member.”
Ultimately, we are left with Appellant advancing a claim construction
that agrees with the plain meaning of the language used in the claims, but
which encompasses subject matter that does not appear to be described in
the Specification in the manner contemplated by 35 U.S.C. § 112, first
paragraph, and the Examiner advancing a claim construction that appears
inconsistent with the plain meaning of the language used in the claims but
renders the claim scope consistent with what the Specification conveys is the
invention.
In the litigation context our reviewing court has debated the issue of
construing claims beyond the scope of what the Specification conveys is the
invention. See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.
3d 1296 (Fed. Cir. 2011) petition for rehearing en banc denied by 659 F.3d
1369. However, the mode of claim interpretation applicable during
litigation, where a patent enjoys a presumption of validity, differs from that
applicable during prosecution of a pending application before the PTO. In
re Zletz, 893 F. 2d 319, 321 (Fed. Cir. 1989). The process of patent
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prosecution is an interactive one, where claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. Id. (citations omitted). “An essential purpose of
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be removed,
as much as possible, during the administrative process.” Id at 322.
We decline to adopt either the Appellant’s or the Examiner’s proposed
claim construction at this time. Where, as here, the claims at issue are
“amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.” Ex Parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008). Thus, pursuant to our authority under 37
C.F.R. § 41.50(b), we enter new grounds of rejection of claims 7-19 under
35 U.S.C. § 112, second paragraph as being indefinite.
In order to sustain a rejection under 35 U.S.C. § 103 or provide a
complete analysis under 35 U.S.C. § 112, first paragraph we must first be
able to ascertain the scope of the subject matter claimed. See In re Steele,
305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if
the hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.); Vas-
Cath Inc. v. Mahurkar, 935 F. 2d 1555, 1564 (Fed. Cir. 1991) (“The
invention is, for purposes of the ‘written description’ inquiry, whatever is
now claimed.”). Since, when read in light of the Specification, the scope of
the term “directly mounted on,” describing the relationship between the
pressing member or pressing surface with the elevator cage or balance
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weight in independent claims 7, 10 and 14, is unclear, we are constrained to
reverse, pro forma, the Examiner’s rejections of claims 7, 10 and 14, and
those depending therefrom, under 35 U.S.C. § 103.
DECISION
We reverse, pro forma, the Examiner’s rejections of claims 7-19.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection of claims 7-19 under 35 U.S.C. § 112 second paragraph
as being indefinite.
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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).

REVERSED; 37 C.F.R. § 41.50(b)

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