Ex Parte O

Board of Patent Appeals and Interferences

Jul 26, 2011

10522191 (B.P.A.I. Jul. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HUGH JAMES O’DONNELL
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Appeal 2010-005581
Application 10/522,191
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4 and 6-16, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims an elevator belt assembly and a method for
making it. Claims 1 and 7 are illustrative:
1. A method of making an elevator belt assembly having a
plurality of cords within a jacket, comprising the steps of:
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(a) aligning the plurality of cords in a selected arrangement;
(b) tensioning the cords a selected amount to stretch and increase
a length of the cords; and
(c) applying a selected jacket material comprising a substantially
noncompressible urethane to the cords to encase the cords in the
jacket so that the cords remain stretched within the jacket.

7. An elevator belt assembly, comprising:
a plurality of cords that are stretched to an increased length; and
a jacket comprising a substantially noncompressible urethane
over the stretched cords that keeps the cords stretched a desired amount
without any external load applied to the belt assembly.

The References
Roberts 3,441,641 Apr. 29, 1969
Prewo WO 01/14630 A1 Mar. 1, 2001
Baranda 2003/0092524 A1 May 15, 2003
The Rejections
The claims stand rejected as follows: claims 1, 7, 8, 10 and 13-16
under 35 U.S.C. § 102(e) over Baranda, claims 7-10 and 13-15 under
35 U.S.C. § 102(b) over Prewo, and claims 1-3, 6 and 11 under
35 U.S.C. § 103 over Prewo in view of Roberts.1
OPINION
We reverse the rejections under 35 U.S.C. § 102, affirm the rejection
under 35 U.S.C. § 103 as to claims 1, 3 and 6, and reverse the rejection
under 35 U.S.C. § 103 as to claims 2 and 11.

1 Claims 4 and 12 are not rejected. A rejection of claims 1-4, 7-9 and 11-13
under 35 U.S.C. § 102(b) over Lambert (US 1,412,310) is withdrawn in the
Examiner’s Answer (Ans. 2).
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Rejection under 35 U.S.C. § 102(e) over Baranda
We need to address only the independent claims (1, 7 and 13), each of
which requires that cords are stretched to an increased length.
Baranda makes an elevator belt by tensioning cords while a
polyurethane jacket is formed around them such that the cords are uniformly
spaced from a smooth, continuous jacket exterior (¶¶ 0009, 0020, 0036). An
exemplified cord is a strand of steel wire and an exemplified cord tension is
50 Newton’s (11 pounds) (¶ ¶ 0019, 0035).
The Examiner argues that “there is no clear factual evidence on this
record that the cords of Baranda are not stretched or lengthened” (Ans. 7).
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear,
either expressly or inherently, in a single reference. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989); In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986). Thus, it is the Examiner’s initial burden to
establish that Baranda’s cords are stretched to an increased length, and the
Examiner has not met that burden.
The Examiner argues that “minute and incremental degrees of
stretching and lengthened are anticipated by the present claims” (Ans. 7).
The Examiner has not established that Baranda’s cords are stretched
even a minute and incremental amount.
Thus, the Examiner has not set forth a prima facie case of anticipation
over Baranda.

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Rejection under 35 U.S.C. § 102(b) over Prewo
We need to address only the rejected independent claims (7 and 13),
each of which requires that cords remain stretched within a jacket without
any external load applied to the belt assembly.
Prewo discloses an elevator belt comprising a combination of steel
and organic fiber cords in a polyurethane jacket (p. 3, ll. 7-8, 17-20; p. 5,
l. 3). “[A]t any given applied load, both types of cords share in the elastic
response of the tension member” (p. 5, ll. 19-21).
The Examiner argues that “there is no clear factual evidence on this
record to substantiate appellant[’]s argument that it is not possible for the
jacket of Prewo to keep the cords stretched without any external load
applied” (Ans. 9).
As pointed out above, the Examiner has the initial burden of
establishing a prima facie case of anticipation, and the Examiner has not
provided evidence which shows that Prewo’s cords remain stretched within
the jacket without any external load applied to the belt assembly.
The Examiner argues that “once the examiner provides a rational[e]
tending to show that the claimed product appears to be the same or similar to
that of the prior art, although produced by a different process, the burden
shifts to applicants to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product” (Ans. 9).
The Examiner has not provided such a rationale. The Examiner has
merely argued that there is no evidence of record which shows that it is not
possible for Prewo’s jacket to keep the cords stretched without any external
load being applied (Ans. 9).
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The Examiner, therefore, has not established a prima facie case of
anticipation over Prewo.
Rejection under 35 U.S.C. § 103 over Prewo in view of Roberts
The Appellant’s claim 1, which is the sole independent claim among
claims 1-3, 6 and 11, does not require that the aligning, tensioning and
applying steps are carried out in that order. Hence, the claim encompasses
aligning cords, applying a substantially noncompressible urethane jacket to
them to that they remain stretched within the jacket when subjected to an
external load, and then tensioning them to stretch them to an increased
length by applying an external load.
The Appellant argues that “[a]ny stretching that occurs in the Prewo
reference occurs because of an external load (e.g., the load of the elevator
system) placed on the belt (Reply Br. 3).
As pointed out above, the Appellant’s claim 1 encompasses tensioning
resulting from an external load. Hence, we are not persuaded of reversible
error in the rejection of claim 1or claim 6 which depends therefrom and is
not separately argued.
Regarding claim 3 which requires that “the cords are tensioned using
a load corresponding to a desired percentage of a breaking strength of the
cords”, the Appellant argues that there is nothing in Prewo which comes
anywhere near suggesting that claim requirement (Br. 13).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418. Given that Prewo’s belt is subjected to the
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tension of an elevator load (p. 1, ll. 6-7), one of ordinary skill in the art,
through no more than ordinary creativity, would have made the belt strong
enough so that the tension on its cords caused by the elevator load would be
only a desired percentage of the breaking strength of the cords to assure that
the belt would not break during use. Accordingly, we are not convinced of
reversible error in the rejection of claim 3.
The Appellant’s claim 2 which depends from claim 1, and claim 11,
which depends from claim 7, require that “the cords are tensioned using a
load that exceeds an anticipated greatest load that the belt assembly will
experience once installed in an elevator system”. The Examiner argues that
“[t]he skilled artisan during routine experimentation would have been
reasonably motivated to tension the cords using a load that corresponds to
that which would result in the safe operation of the car and counterweight”
(Ans. 12).
That argument is not persuasive because the Examiner has not
provided evidence that one of ordinary skill in the art would have tensioned
Prewo’s cords to a greater tension that that which results in the elastic
response during use referred to by Prewo (p. 5, ll. 19-21). The Examiner’s
argument further is unpersuasive with respect to claim 11 because the
Examiner has not established that the jacket required by claim 7, from which
claim 11 depends, which keeps cords stretched without any external load
applied to the belt assembly would have been prima facie obvious to one of
ordinary skill in the art.2

2 A discussion of Roberts is not necessary to our decision.
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DECISION/ORDER
The rejections of claims 1, 7, 8, 10 and 13-16 under
35 U.S.C. § 102(e) over Baranda and claims 7-10 and 13-15 under
35 U.S.C. § 102(b) over Prewo are reversed. The rejection of claims 1-3, 6
and 11 under 35 U.S.C. § 103 over Prewo in view of Roberts is affirmed as
to claims 1, 3 and 6 and reversed as to claims 2 and 11.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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