Ex Parte Parrini

Board of Patent Appeals and Interferences

Jul 8, 2010

10717805 (B.P.A.I. Jul. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LORENZO PARRINI
____________________

Appeal 2009-003444
Application 10/717,805
Technology Center 3600
____________________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/717,805

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STATEMENT OF THE CASE
Lorenzo Parrini (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-15. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention pertains to a cable or belt used as an
elevator support means. Spec. 1, ll. 5-6. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. An elongated load-bearing support with load-bearing
strands each having a plurality of fibers, the strands being
surrounded by a sheath, the strands comprising:
a plurality of load-bearing fibers formed of a base
material being in a first phase; and
a reinforcing material being in a second phase and being
distributed in said base material whereby said reinforcing
material increases a modulus of elasticity of the strands in a
longitudinal direction of said fibers for supporting at least one
of an elevator car and an elevator counterweight.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 5, 10, and 15 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
2. Claims 8 and 14 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention;
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3. Claims 1-7, 9-13, and 15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over De Angelis et al. (US 5,566,786, issued Oct. 22,
1996) and Olesen et al (US 4,956,039, issued Sept. 11, 1990); and
4. Claims 8 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Angelis and LaNieve et al (US 6,162,538, issued Dec.
19, 2000).

OPINION
Claims 5, 10, and 15 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement
Dependent claims 5, 10, and 15 recite that the reinforcing material is
in the form of at least one of, inter alia, spheres, grains, capsules, discs and
plates. The Examiner, alluding to the “whereby” phrase in each respective
independent claim, questions whether the use of such shapes will increase
the modulus of elasticity of the strands in the longitudinal direction. Ans. 3,
7. The Examiner appears to maintain that the prior art indicates that such
shapes, when randomly distributed and having a higher stiffness than the
base material, would degrade the modulus. Id. at 7-8. Appellant asserts
that, “[w]hile random distribution and parallel distribution of the reinforcing
material may result in different values, both create an increase in the
modulus of elasticity of the strands in a longitudinal direction of the fibers as
recited in the claims.” App. Br. 8.
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). The Examiner did not
find that Appellant’s Specification fails to disclose the recited shapes or fails
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to disclose that the use of those shapes will increase the modulus in the
longitudinal direction as recited in the “whereby” phrases. The Examiner
has not adequately explained why one of ordinary skill, upon reading
Appellant’s Specification, would not recognize that Appellant had
possession of the questioned subject matter. As such, we cannot sustain the
rejection because the Examiner has not made a prima facie showing that
Appellant’s Specification fails to satisfy the written description requirement
of § 112, first paragraph.

Claims 8 and 14 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite
Independent claim 7 recites “a reinforcing material being in a second
phase … whereby said reinforcing material increases a modulus of elasticity
of the strands in a longitudinal direction of said fibers.” Claim 8 depends
from claim 7 and recites “wherein … said second phase reinforcing material
increases a modulus of elasticity of said fibers in a radial direction of said
fibers.” Independent claim 11 and its dependent claim 14 recite similar
language in the context of a method.
We do not agree with the Examiner’s conclusion (Ans. 4) that it is
unclear as to whether the radial direction language of each dependent claim
is to replace or add to the longitudinal direction language of the respective
independent claim. When read in conjunction with their respective
independent claim, dependent claims 8 and 14 recite both the longitudinal
and the radial directions. We reverse the indefiniteness rejection of claims 8
and 14.

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Claims 1-7, 9-13, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Angelis and Olesen
Appellant contends that the rejection is in error because neither
reference discloses a fiber having a second phase2 distributed in the base
material of a first phase. See App. Br. 9, 11. Appellant also argues that the
combined references would result in a two-phase cable sheath rather than the
claimed two-phase fiber. Id. at 11.
The Examiner found that De Angelis discloses a load-bearing support
device having a sheath surrounding strands comprised of arimid fibers (a
base material of a first phase), where the strands are impregnated with a
reinforcing material, a polyurethane solution, of a second phase – but found
that De Angelis’ reinforcing material is externally applied to the fibers.
Ans. 5, 9; see also Olesen, col. 5, ll. 1-8 and col. 6, ll. 48-53 (suggesting that
the understanding in the synthetic composite body art is that a strand
comprised of fibers is “impregnated” in that the impregnating material, e.g.
hot melt plastic, flows into the strands but between, not into, the individual
fibers). The Examiner further found that Olesen teaches a thermoplastic
sleeve having “the distribution of reinforcing material of one phase within a
base material of another (second) phase.” Ans. 5; see also id. at 6. The
Examiner concluded that it would have been obvious to modify De Angelis’
base material (the fibers) because Olesen’s objective was to manufacture a
composite cable-like body which satisfies the requirements of relatively high
tensile and compressive forces. Id. at 5, 10.

2 According to Appellant’s Specification, a phase is a solid, liquid or
gaseous body having physical and chemical properties which are
homogenous or at least vary without discontinuity. Spec. 3, ll. 13-17.
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Olesen’s two-phase material is a sleeve layer applied over the core
string formed of filaments and hot melt adhesive between the filaments.
Olesen, col. 6, ll. 29-31, 48-53; col. 6, l. 67 – col. 7, l. 4. The Examiner does
not direct us to any disclosure in either De Angelis or Olesen of a two-phase
fiber or filament. The Examiner does not adequately explain why one of
ordinary skill would find it obvious to incorporate a second phase into the
fiber of De Angelis, rather than into the sheath (sleeve) over the fibers as
suggested by Olesen. As such, we cannot sustain the obviousness rejection
based on De Angelis and Olesen.

Claims 8 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Angelis and LaNieve
As mentioned above, the Examiner rejected claims 8 and 14 based on
the position that it is unclear as to whether the claims recite limitations
directed to both the longitudinal and radial directions or to only the radial
direction. The Examiner states: “For purpose of prosecution, the former
(e.g. radial direction only) will be applied.” Ans. 4; see also id. at 8. We
have construed the claims as reciting both directions, and therefore the
Examiner has applied an incorrect claim construction to the prior art. The
Examiner’s findings appear to only pertain to the radial direction, and the
Examiner does not address the longitudinal direction language of the claims.
See Ans. 11 (finding that LaNieve et al teaches “increasing a modulus of
elasticity of their fibers in a radial direction and, therefore, meeting the claim
language.”); see also id. at 7. As such, the Examiner has not made sufficient
findings and has not provided adequate reasoning to explain why one having
ordinary skill in the art would have arrived at the subject matter of claims 8
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and 14 in view of De Angelis and LaNieve. Accordingly, we cannot sustain
the rejection.
DECISION
The decision of the Examiner to reject claims 1-15 is reversed.

REVERSED

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