Ex Parte O et al

Board of Patent Appeals and Interferences

May 14, 2009

09921803 (B.P.A.I. May. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUGH JAMES O’DONNELL, JOHN PETER WESSON,
CHRISTOPH DENGER and DAVID E. McKEE
____________

Appeal 2009-1552
Application 09/921,803
Technology Center 3600
____________

Decided:1 May 14, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, 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).

Appeal 2009-1552
Application 09/921,803

2
STATEMENT OF THE CASE
Hugh O’Donnell et. al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 6-8 and 16-26. Claims
1-5 and 9-15 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention is an elevator rope or belt having a
waxless urethane coating. Spec. 1, para. 1. Claim 6, reproduced below, is
representative of the subject matter on appeal.
6. A method of making an elevator rope assembly,
comprising:
arranging a plurality of elongate load
carrying members in a selected arrangement; and
coating the load carrying members with a
urethane coating that does not contain wax.

THE EVIDENCE
The Examiner relies upon the following evidence:
Harper US 3,848,037 Nov. 12, 1974
Wilcox US 4,624,097 Nov. 25, 1986
Aulanko WO 98/29326 Jul. 9, 1998

Appeal 2009-1552
Application 09/921,803

3
THE REJECTIONS
Appellants seek our review of the following rejections:
1. The Examiner rejected claims 6-8, 17, 21, 23, 24, and 26 under
35 U.S.C. § 103(a) as unpatentable over Wilcox and Harper.2
2. The Examiner rejected claims 16, 18-20, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Wilcox, Harper, and Aulanko.

ISSUES
The Examiner found that Wilcox discloses the method of making the
rope of claims 6-8, 17, 21, 23, 24, and 26, except that the urethane coating
contains wax which is used for releasability from molds. Ans. 3, 6. The
Examiner found that Harper discloses a method of manufacture of
polyurethane moldings using a release agent and a barrier agent that
produces moldings with surfaces that are wax-free. Ans 3-4. The Examiner
concluded it would have been obvious to a person of ordinary skill in the art
to use the method of Harper providing releasability from molds to
manufacture the rope of Wilcox without wax in the coating. Ans. 4, 6-7.
Appellants make a variety of arguments why there is no reason to
combine the references as found by the Examiner, and further contend that
even if combined the references do not meet the limitations of the claim
because the jacket of Wilcox’s rope would still contain wax. App. Br. 3-6;
Reply Br. 2-3.

2 Although the Examiner included claim 25 in the first rejection (Ans. 3),
claim 25 depends from claim 18, which contains the limitation that the belt
has a rectangular cross-section, and should have been listed in the second
rejection rather than the first. We will analyze claim 25 under the second
rejection.

Appeal 2009-1552
Application 09/921,803

4
The first issue before us is:
Have Appellants demonstrated the Examiner erred in the rejection of
claims 6-8, 17, 21, 23, 24, and 26 because there is no reason to combine the
references as found by the Examiner, or because the jacket of Wilcox’s rope,
when modified, would still contain wax in contradiction of the claims.
Appellants further contend that the Wilcox reference cannot be
modified to include metallic load carrying members, as called for in claims
24-26, because this would be in direct contradiction of Wilcox’s teaching to
make a rope entirely of synthetic materials. App. Br. 7; Reply Br. 3.
The second issue before us is:
Have Appellants demonstrated the Examiner erred in the rejection of
claims 24-26 because the Wilcox reference cannot be modified to include
metallic load carrying members?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Wilcox discloses a rope made entirely of synthetic plastic materials
and a method of manufacture. Wilcox, col. 1, ll. 4-6.
2. Wilcox discloses an object of the invention is to manufacture the
synthetic rope using conventional wire rope making techniques and
equipment, except the extrusion process used to make the jacket 32
(outer coating) is not performed using conventional equipment.
Wilcox, col. 1, ll. 44-46; col. 2, ll. 52-56.
Appeal 2009-1552
Application 09/921,803

5
3. Wilcox discloses a lubricant is used during manufacture that
remains present in the finished product and is beneficial. Wilcox,
col. 2, l. 68 to col. 3, l. 3; col. 3, ll. 59-61.
4. Wilcox discloses the lubricant may be fatty acid amide, or another
of a variety of lubricants including various waxes. Wilcox, col. 2,
l. 68 to col. 3, l. 3; col. 3, l. 59 to col. 4, l. 4.
5. Wilcox discloses that in the prior art it was known to make rope
from metal wires coated with plastic materials. Wilcox, col. 1, ll.
15-25.
6. Appellants’ Specification discloses that “waxes typically are
included as part of the urethane manufacturing process,” strongly
implying urethane may be manufactured without including waxes.
Spec. 1, para. 3.
7. Harper discloses a method of manufacture of polyurethane
moldings by first applying a release agent (oily or waxy coating
layer) to the mold, followed by overcoating the mold with a barrier
layer (hydrophilic water-soluble layer), and then when the barrier
layer is dry, molding a polyurethane mix in the mold. Harper, col.
2, ll. 30-37, 44-48.
8. Harper discloses that because the release agent adheres to the mold
and the barrier layer adheres to the molded article, the article is
easily removed. Harper, col. 2, ll. 37-38, 58-62; col. 2, l. 67 to col.
3, l. 3.
9. Harper teaches that once removed, the molded article may be
washed with water, aqueous detergent or slightly alkaline aqueous
solution, producing a surface that is oil- and wax-free. Harper,
Appeal 2009-1552
Application 09/921,803

6
col. 2, ll. 21-23, 38-39.
10. Because Harper teaches the result of the process is a molded
polyurethane article with a surface that is wax-free, this indicates
that the polyurethane itself does not contain wax.
11. Appellants do not provide objective evidentiary support indicating
that polyurethane mixes typically contain waxes. Spec. passim;
App. Br. passim; Reply Br. passim.

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d
1091 (Fed. Cir. 1986).

ANALYSIS
Rejection of claims 6-8, 17, 21, 23, 24, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Wilcox and Harper
Appellants argue claims 6-8, 17, 21, and 23 as a group. App. Br. 3-8.
As such, we select claim 6 as the representative claim, and claims 7, 8, 17,
21, and 23 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Appeal 2009-1552
Application 09/921,803

7
Appellants make several arguments that the combination of references
found by the Examiner cannot be accomplished. App. Br. 3-6; Reply Br.
2-3.
Appellants contend the Examiner’s proposed modification of
eliminating the wax from the jacket of Wilcox’s rope cannot be
accomplished because such a modified rope could not be made “using
conventional rope making techniques and equipment,” which is contrary to
the express teaching of the reference. App. Br. 3-5 (quoting from Wilcox,
col. 1, ll. 44-46). Appellants’ argument ignores an important disclosure of
the reference. While Wilcox discloses an object of the invention is to
manufacture the synthetic rope using conventional wire rope making
techniques and equipment, this does not include the process for adding the
outer coating to the rope (Fact 2). In other words, Appellants’ argument is
based on a mischaracterization of the teaching of Wilcox, because Wilcox’s
coating is not made using only conventional wire rope equipment.
Appellants assert a second reason that Wilcox’s rope cannot be made
without wax is because “typical polyurethane mixes include waxes,” and
further assert that the Examiner must provide evidence to support the
position that “polyurethane does not inherently include a wax.” Reply Br. 2
(quoting the Ans. 6). This argument is unconvincing for two reasons. First,
even assuming, arguendo, that Appellants are correct that typical
polyurethane mixes include waxes, that fact does not necessitate the
conclusion that it is not possible to produce a moldable urethane resin
without wax. To the contrary, Harper indicates that a moldable polyurethane
resin can be produced without wax, and Appellants’ Specification also
implies this is true (Facts 6, 10). Second, the Examiner does not have a
Appeal 2009-1552
Application 09/921,803

8
burden to prove that some polyurethane mix does not inherently include
wax. The Examiner stated a prima facie case of obviousness, shifting the
burden to Appellants to come forward with evidence and argument. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants could have
submitted objective factual evidence regarding inclusion of wax in the
manufacture of polyurethane, but chose not to (Fact 11). CFMT, Inc. v
Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (an
applicant may submit objective factual evidence to the PTO during
prosecution). Appellants’ argument that typical polyurethane mixes include
waxes, without objective evidentiary support, is unconvincing. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems
to follow from common experience is just attorney argument and not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness”).
Similarly, Appellants contend that if wax was removed from the
Wilcox reference entirely, as would be required by Appellants’ claim 6, this
would remove an intended beneficial feature and this is not permitted in a
prima facie case of obviousness. Reply Br. 2-3. We disagree with the
premise of this contention. Claim 6 contains the limitation that the rope has
a urethane coating that does not contain wax; claim 6 does not require the
entire rope to be wax-free. Additionally, Appellants recite no legal authority
for the contention that a reference must retain all of its intended beneficial
features in a rejection based on obviousness, and we know of no such rule.
Appellants contend there is no reason to combine the references as
proposed by the Examiner because Harper teaches a method of producing
polyurethane articles with a paintable surface and Wilcox’s rope is not
Appeal 2009-1552
Application 09/921,803

9
painted. App. Br. 5; Reply Br. 3. In addition to producing a paintable
surface, the Examiner found that a person of ordinary skill would find it
obvious to modify Wilcox with the teachings of Harper “for savings in costs,
ease of sourcing and performance.” Ans. 4. By not even addressing these
reasons to combine, Appellants have failed to demonstrate error in the
Examiner’s position. In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).
Appellants also contend that using the technique of Harper will not
change the content of the jacket of Wilcox’s rope, which would still contain
wax contrary to the limitation of claim 6. App. Br. 6. Appellants are
ignoring the rejection as articulated by the Examiner. The Examiner did not
find that Harper’s method removes the wax from the coating of Wilcox’s
rope; rather, the Examiner’s rejection modifies Wilcox by using a
polyurethane coating without wax and coating the mold with release agent
and barrier layer intermediate the release agent and the surface of the
polyurethane, as suggested by Harper. Ans. 4, 5-7. By attacking the Wilcox
reference individually, and not addressing the rejection as articulated by the
Examiner, Appellants have failed to demonstrate error in the Examiner’s
decision to reject claim 6. See In re Keller, 642 F.2d 413 (CCPA 1981); In
re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Appellants have failed to demonstrate error in the Examiner’s
decision to rejection claim 6. Claims 7, 8, 17, 21, and 23 fall with claim 6.
Claims 24 and 26
Claims 24 and 26 each contain the limitation that the plurality of
elongate members are metallic.3 In reaching the conclusion of obviousness,

3 Claim 24 depends from independent claim 6, and claim 26 depends from
independent claim 21.
Appeal 2009-1552
Application 09/921,803

10
the Examiner found that Wilcox discloses a plurality of elongate load
carrying members that are metallic, citing to column 1, lines 15 to 25 of
Wilcox. Ans. 3. The rejection does not point out that Wilcox makes this
disclosure as prior art, and not as Wilcox’s own device. The rejection then
more accurately would be described not as a modification of Wilcox’s
device, but rather as a modification of the prior art device disclosed in
Wilcox. We conclude Appellants had a fair opportunity to respond to the
thrust of this rejection because the clarified rejection is under the same
statutory section (35 U.S.C. § 103(a)) and over the same prior art (Wilcox
and Harper). In re Kronig, 539 F.2d 1300, 1302-1303 (CCPA 1976).
Further, the rejection specifically points to the portion of Wilcox that makes
clear the disclosure related to metallic load bearing members was not
Wilcox’s device, but rather was in the prior art.
Appellants contend that “[t]he Examiner has not established any
teaching of metallic load carrying members in the context of the Wilcox
reference.” App. Br. 7. To the contrary, Wilcox discloses it was known to
make ropes using metallic wires as the load carrying members, coated with
plastic materials (e.g. polyurethane) (Fact 5). Appellants also contend that
the Wilcox reference cannot be modified to include metallic load carrying
members because this would be in direct contradiction of Wilcox’s teaching
to make a rope entirely of synthetic materials. App. Br. 7; Reply Br. 3. This
is also an unconvincing argument because the modification as stated in the
Examiner’s rejection is not of Wilcox’s rope, but rather of the prior art rope
disclosed by Wilcox. Appellants have failed to demonstrate error in the
Examiner’s decision to reject claims 24 and 26.

Appeal 2009-1552
Application 09/921,803

11
Rejection of claims 16, 18-20, 22 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Wilcox, Harper, and Aulanko
Claims 16, 18-20, and 22
Appellants argue claims 16, 18-20, and 22 as a group. App. Br. 3-8.
As such, we select claim 16 as the representative claim, and claims 18-20
and 22 stand or fall with claim 16. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 16 depends from claim 6, and adds the limitation that the
urethane coating has a rectangular cross-section. The Examiner rejected
claim 16 as unpatentable over Wilcox and Harper as found for the rejection
of claim 6, modified with the rectangular cross-section taught by Aulanko.
Appellants do not contest the modification taught by Aulanko, but rather
contend that Aulanko does not correct the deficiencies of the Wilcox and
Harper combination as pointed out in the arguments against claim 6. App.
Br. 7. As we concluded in the analysis of claim 6, supra, these arguments
fail to demonstrate error in the Examiner’s decision. Claims 18-20 and 22
fall with claim 16.
Claim 25
Claim 25 depends from claim 18, and contains the limitation that the
plurality of elongate load carrying members are metallic. For the reasons set
forth in the analysis of claim 24 and 26, supra, as well as claim 18, supra,
Appellants have failed to demonstrate error in the Examiner’s decision to
reject claim 25.

CONCLUSIONS
Appellants have failed to demonstrate the Examiner erred in
articulating a reason to combine Wilcox and Harper, as stated in the
rejection of claims 6-8, 17, 21, 23, 24, and 26. Further, Appellants have
Appeal 2009-1552
Application 09/921,803

12
failed to demonstrate the combination found by the Examiner was in error
because the jacket of Wilcox’s rope in the modification proposed by the
Examiner would not contain wax, so that it conforms to the limitation of the
claims.
Appellants have also failed to demonstrate the Examiner erred in
determining that the Wilcox reference can be modified to include metallic
load carrying members, as called for in claims 24-26.

DECISION
We affirm the Examiner's rejection of claims 6-8 and 16-26.
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

vsh

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009