Ex Parte Mustalahti et al

Patent Trial and Appeal Board

Feb 22, 2013

10863292 (P.T.A.B. Feb. 22, 2013)

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.
10/863,292 06/09/2004 Jorma Mustalahti 8959-000005/US 6325
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 JORMA MUSTALAHTI and ESKO AULANKO
____________________

Appeal 2011-002984
Application 10/863,292
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, JILL D. HILL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 2-
15 and 17-54. Appellants’ representative presented oral argument on
February 11, 2013.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and we designate our affirmance 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.
Claim 18, reproduced below, is illustrative of the claimed subject matter:
18. An elevator, comprising:
a hoisting machine;
a set of hoisting ropes; and
a traction sheave;
wherein the set of hoisting ropes has a load-bearing part
twisted from steel wires,
wherein a thickness of the load-bearing part twisted from
steel wires is below 8 mm,
wherein a diameter of the traction sheave is smaller than
320 mm,
wherein an overall contact between the traction sheave
and the hoisting ropes exceeds a contact angle of 180°, and
wherein a weight of the hoisting machine is at most 1/5
of a nominal load of the elevator.

1 This case is related to Patent Trial and Appeal Board appeals: 2010-
007006, 2010-009207, and 2010-009194. Appellants presented oral
argument for all four cases on this date.
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Evidence Relied Upon2
Gladenbeck
Heikkinen
Dambre
Vanhala
Aulanko '211
Aulanko '666
Kato
US 4,022,010
US 4,756,388
US 4,952,249
US 5,370,205
US 5,429,211
US 6,199,666 B1
US 2003/0089551 A1
May 10, 1977
Jul. 12, 1988
Aug. 28, 1990
Dec. 6, 1994
Jul. 4, 1995
Mar. 13, 2001
May 15, 2003
Ach
Baranda
Orrman
US 2003/0159891 A1
US 6,739,433 B1
WO 02/059028
Aug. 28, 2003
May 25, 2004
Aug. 1, 2002

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 2-4, 6-9, 11, 18-22, 25, 26, 30-36, 38, and 48-54 under 35
U.S.C. § 103(a) as unpatentable over Vanhala, Baranda, and Aulanko
'666.
II. Claim 37 under 35 U.S.C. § 103(a) as unpatentable over Vanhala,
Baranda, Aulanko '666, and Aulanko '211.
III. Claim 5, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over
Vanhala, Baranda, Aulanko '666, Gladenbeck, and Heikkinen.
IV. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Vanhala,
Baranda, Aulanko '666, and Orrman.

2 The Evidence Relied Upon in the Examiner’s Answer incorrectly identifies
US 5,490,577 to Yoo as to Vanhala. Ans. 4. Aulanko '666 is inadvertently
omitted from the Evidence Relied Upon. Id.
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V. Claims 41, 42, 45, and 46 under 35 U.S.C. § 103(a) as unpatentable
over Vanhala, Baranda, Aulanko '666, and Orrman.
VI. Claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over Vanhala,
Baranda, Aulanko '666, and Kato.
VII. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Vanhala,
Baranda, Aulanko '666, Kato, and Dambre.
VIII. Claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Vanhala, Baranda, Aulanko '666, and Janovsky.
IX. Claim 27 under 35 U.S.C. § 103(a) as unpatentable over Vanhala,
Baranda, Aulanko '666, and Ach.
X. Claim 28 under 35 U.S.C. § 103(a) as unpatentable over Vanhala,
Baranda, Aulanko '666, Ach, and Orrman.

The Examiner also provisionally rejected claims on the ground of
nonstatutory, obviousness-type double patenting. Office Action dated Jan.
19, 2010, at 2. However, the Examiner withdrew these rejections, and for
that reason, these rejections are not before us on appeal. See Ans. 3 (asking
that these rejections not be reviewed on appeal).
Appellants ask that the Board allow pending claims 43 and 44 because
they were only subject to the provisional nonstatutory obviousness-type
double patenting rejections that were withdrawn, and therefore are not
subject to any ground of rejection. App. Br. 29. The Board reviews adverse
decisions of Examiners, and because there is no outstanding adverse
decision by the Examiner regarding claims 43 and 44, these claims are not
before us on review. See generally 35 U.S.C. § 6(b); 37 C.F.R. § 41.50. We
leave to the Examiner to clarify the status of these claims.
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OPINION
With regard to independent claim 18 as subject to the first rejection,
Appellants make three arguments, each based on either Baranda or Aulanko
'666. App. Br. 33-46. Each of the independent claims on appeal contain
similar limitations to those contested with regard to claim 18, and each of
the nine remaining rejections before us relies in part upon Baranda and
Aulanko '666. See Ans. 4-14. Appellants repeat the three arguments with
regard to the remaining rejections. App. Br. 48-57. Therefore, our analysis
of claim 18 is applicable to each of the rejections before us.
Hoisting Ropes
First, Appellants argue that a “set of hoisting ropes,” as recited in
claim 18, cannot reasonably be interpreted to include the flat belt of Baranda
because a person of ordinary skill in the art “would distinguish between a
‘flat belt’ and a ‘set of hoisting ropes.’” App. Br. 34; see also App. Br. 33;
Reply Br. 4-5. In support of this argument, Appellants contend that both
Baranda and World Intellectual Property Organization International Patent
Publication Number WO 99/43589, as referenced in the Specification at
page 2, distinguish between flat belts and ropes.
Appellants’ contention is not factually supported by the evidence
cited. Appellants’ Specification states that WO 99/43589 discloses an
elevator suspended using “flat belts” having relatively small diversion
diameters on the traction sheave and diverting pulleys. Spec. 2:10-11. The
Specification goes on to state that this solution has the problem of ensuring
sufficient grip between the traction sheave and the “hoisting ropes.” Spec.
2:28-30. This interchangeable use of the terms “flat belts” and “hoisting
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ropes” suggests the terms have the same, rather than a distinguishable
meaning.3
Further, Baranda consistently refers to tension members utilized in
elevators as “ropes” (see, e.g., col. 1, ll. 10-12, 15-20), or more specifically
as a “flat rope” (see, e.g., col. 4, l. 33-41). We discern no disclosure of a
distinction between ropes and flat belts, in fact, the term “flat belts” is not
found in the reference at all. Given this, Appellants’ contention is
unpersuasive.
Even if we assumed that Appellants’ contention is correct that a
person of ordinary skill in the art would distinguish between a flat belt and a
set of hoisting ropes, for the reasons that follow, that contention does not
convincingly demonstrate error in the rejection.
It is uncontested that Vanhala discloses a set of hoisting ropes
(hoisting ropes 3). Ans. 5; App. Br. 33-34; Reply Br. 4-5; see also Vanhala,
col. 3, ll. 65-68; fig. 1. The rejection modifies Vanhala’s hoisting ropes so
that the thickness of the load-bearing part twisted from steel wires is below
8mm, as disclosed by Baranda. Ans. 5. Therefore, the proposed
combination includes the hoisting rope of Vanhala as modified by Baranda.
Therefore, Appellants’ argument that person of ordinary skill would
distinguish between Baranda’s flat belt and a hoisting rope is an
unconvincing individual attack on the reference.
Further, it is not enough to say that a person of ordinary skill in the art
would have distinguished between a flat belt and a hoisting rope; Appellants

3 At oral argument, Appellants’ representative suggested that use of the term
“hoisting ropes” was perhaps an incorrect translation from the parent
document. No argument based on this contention is contained in the Appeal
Brief or the Reply Brief. See 37 C.F.R. § 41.47(e).
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would have to explain why a person of ordinary skill in the art would
recognize that Baranda’s disclosure regarding the thickness of the twisted
steel wires of a flat rope4 are inapplicable to a hoisting rope such as
Vanhala’s. Therefore, Appellants’ argument also does not address the
rejection as articulated by the Examiner.
Thickness and Diameter
Second, Appellants argue that independent claim 18 calls for the
thickness of the load-bearing part of the hoisting ropes twisted from steel
wires to be below 8mm and the diameter traction sheave to be smaller than
320 mm, while in contrast, Baranda discloses that safety codes require such
thickness to be 8mm minimum and such diameter to be at least 320 mm.
App. Br. 42 (citing Baranda, col. 1, ll. 39-49); see also App. Br. 43-44;
Reply Br. 18-21.
Appellants’ first argument implies that Baranda’s disclosures do not
apply to hoisting ropes, while Appellants’ second argument identifies a
portion of Baranda as applicable to hoisting ropes, further undermining
Appellants’ first argument.
The Examiner found that Baranda discloses a hoisting rope that
includes a load-bearing part twisted from steel wires having a thickness of
less than 8 mm, and also discloses a traction sheave having a diameter
smaller than 320 mm as claimed. Ans. 5 (citing Baranda col. 3, ll. 60-65 and
col. 4, ll. 40-41). Appellants’ argument based upon a disclosure in column 1
of Baranda does not address the finding as articulated by the Examiner, and
for that reason is unpersuasive.

4 While Appellants refer to Baranda’s “flat belt,” Baranda refers to a “flat
rope.” See e.g., App. Br. 33; Baranda, col. 4, ll. 26-43.
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Nominal Load
Third, Appellants contend that the proposed combination does not
disclose the limitation that the weight of the hoisting machine is at most
about 1/5 of the weight of the nominal load5 of the elevator. App. Br. 44-46.
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. 35-42; Reply Br. 6-17. We construe the limitation at issue,
and then examine the prior art in light of that claim interpretation and
Appellants’ contention.
Independent claim 18 calls 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 2:9. 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. 3:6-16.
The Specification states that the ratio of hoisting machine weight can
be reduced to be at most 1/5 of the nominal load. Spec. 16 (as amended
June 18, 2007). 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. 16-18 (as amended June
18, 2007).

5 “Nominal load” is synonymous with “maximum working load,” and refers
to the load carrying capacity of the elevator car. 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.
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The Specification does not state that any of these ratios produce
unexpected results, nor does the Specification state that any of these ratios
are critical.6 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 claim
18 is not a critical ratio and does not 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 claim 18. See Aulanko '666,
col. 2, ll. 61-67; App. Br. 35-42; Reply Br. 6-17.
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

6 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.
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so that it is at most about 1/8 of a weight of the axle load of the elevator.7
Col. 2, ll. 61-67; see also Ans. 5.
In view of Aulanko '666 as a whole, a person of 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.
Depending on the portion of axle load attributable to nominal load, a
range of hoisting weight to axle load of less than 1/8, as disclosed by
Aulanko '666, corresponds 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
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.’”).

7 An axle load of 40,000 kg and a hoisting machine weight of 5,000 kg.
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Thus, we sustain the rejections. Our reasoning differs from, or
elaborates on, the reasoning articulated in the Examiner’s rejection.
Accordingly, we designate our affirmance as NEW GROUNDS 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.

DECISION
We affirm the Examiner’s decision to reject claims 2-15 and 17-54,
but designate that affirmance as NEW GROUNDS OF REJECTION under
37 C.F.R. § 41.50(b).
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
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 …

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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; 37 C.F.R. § 41.50(b)

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