Ex Parte Qiu et al

Board of Patent Appeals and Interferences

Apr 30, 2004

09571896 (B.P.A.I. Apr. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MINGLUN QIU and LEANDRE ADIFON
____________
Appeal No. 2004-0906
Application No. 09/571,896
____________
ON BRIEF
____________
Before WARREN, WALTZ, and PAWLIKOWSKI, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 and 3 through 10, which are all of the
claims pending in this application. We have jurisdiction pursuant
to 35 U.S.C. § 134.
According to appellants, the invention is directed to an
elevator system that includes a pair of elevator car guide rails, a
separate counterweight guide rail, an elevator car and a
counterweight in a certain specified relationship (Brief, page 2).
Appellants state that the claims do not stand or fall together and
Appeal No. 2004-0906
Application No. 09/571,896
1We note that claim 10 appears in two groups, i.e., Groups I
and III. This error is harmless in view of our consideration of
the claims as discussed below.
2
group the claims in four groups (Brief, page 4).1 Appellants have
presented reasonably specific, substantive reasons for the separate
patentability of claims 1, 4, 7 and 8 (i.e., one claim from each
grouping; see the Brief, pages 6-13). Therefore, to the extent
each claim has been argued, we consider claims 1, 4, 7 and 8
separately. See 37 CFR § 1.192(c)(7)(2000) and In re McDaniel,
293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
Representative independent claim 1 is reproduced below:
1. An elevator system comprising:
a pair of elevator car guide rails that is supported by and
is substantially parallel planar to a single wall;
a separate counterweight guide rail supported by and adjacent
to the single wall and spaced laterally from said elevator car
guides rails;
an elevator car mounted for movement along said elevator
car guide rails in a first path; and
a counterweight mounted for movement along said counterweight
guide rail in a second path, the first path of said elevator car
and the second path of said counterweight being oriented laterally
and parallel to one another along the single wall.
Appeal No. 2004-0906
Application No. 09/571,896
2The examiner states that “the rejection based upon White
under 35 U.S.C. § 102 and the portion of the rejection based upon
Bumgarner under 35 U.S.C. 103 have been withdrawn.” Answer, page
2, ¶(3). In addition, we determine that the rejections of claims
4 and 8 under section 103(a) over White and of claim 10 under
section 103(a) over White in view of Black (see the final Office
action dated Dec. 3, 2002, Paper No. 12) have not been repeated
in the Answer, while Bumgarner has been applied under section
103(a) against claims 4 and 8. Any rejections not repeated in
the Answer are considered as withdrawn. See Paperless Accounting
v. Bay Area Rapid Transit Sys., 804 F.2d 659, 663, 231 USPQ 649,
652 (Fed. Cir. 1986).
3
The examiner has relied upon the following references in
support of the rejections on appeal:
Bumgarner 1,352,500 Sep. 14, 1920
Crispen 2,088,690 Aug. 03, 1937
The claims on appeal stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite (Answer, page 2). Claims 1,
3, 5-7 and 9 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Bumgarner or Crispen (Answer, page 3). Claims 4 and 8 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Bumgarner or
Crispen (Answer, page 4). Claim 10 stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Crispen (id.).2 We affirm the
rejection based on section 112, ¶2, as well as the section 102(b)
rejections over Bumgarner or Crispen and the rejection of claim 10
under section 103(a) over Crispen essentially for the reasons
stated in the Answer and those reasons set forth below. We reverse
Appeal No. 2004-0906
Application No. 09/571,896
4
the rejections of claims 4 and 8 over Bumgarner or Crispen for
reasons stated in the Brief, Reply Brief, and reasons set forth
below. Accordingly, the decision of the examiner is affirmed.
OPINION
A. The Rejection under § 112, ¶2
The examiner finds that the term “substantially parallel
planar” as recited in claims 1 and 7 on appeal is indefinite since
it is unclear as to which elements are considered as parallel and
which elements have to be in a plane (Answer, paragraph bridging
pages 2-3; page 4, ¶(13)). Appellants argue that the subject of
the clause is the “pair” of rails which “is” substantially parallel
planar to a single wall (Brief, page 6; Reply Brief, page 2).
Therefore appellants submit that the claim is definite and clearly
indicates that it is the pair of rails which is substantially
parallel to the wall, with the pair of rails substantially defining
a plane, as does the wall (id.).
The examiner and appellants do not contest the meanings of
“parallel” or “planar” (see the Answer, the Brief and Reply Brief
in their entirety). The issue involves which elements of the
claim must be “substantially parallel planar” (id.). We agree
with appellants that the subject of the first clause of claim 1
Appeal No. 2004-0906
Application No. 09/571,896
5
on appeal is “a pair” of elevator car guide rails that “is
substantially parallel planar” to a single wall (Brief, page 6;
Reply Brief, page 2). However, we agree with the examiner that the
clear and unambiguous language of this clause does not require
that the wall is planar, merely that the pair of car guide rails
is substantially parallel and in a plane (Answer, page 4). Since
appellants have indicated that they intend the claim to be of a
different scope, i.e., that the wall must, like the rails,
substantially define a plane (Brief, page 6; Reply Brief, page 2),
we conclude that the claims on appeal do not meet the requirements
of the second paragraph of section 112. In other words, the claims
do not set forth what the appellants regard as their invention.
See Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377, 55 USPQ2d
1279, 1282 (Fed. Cir. 2000); In re Cormany, 476 F.2d 998, 1000-02,
177 USPQ 450, 451-53 (CCPA 1973) (A properly construed claim of
such scope as to include what appellants said they did not intend
to include does not comply with section 112, ¶2).
Furthermore, we note that another requirement of the second
paragraph of section 112 is that the claim must be sufficiently
definite. See Solomon v. Kimberly-Clark Corp., supra. In
determining whether the claim is sufficiently definite, we must
analyze whether one skilled in the art would understand the bounds
Appeal No. 2004-0906
Application No. 09/571,896
6
of the claim when read in light of the specification. See In re
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The word “substantially” in the phrase “substantially
parallel planar” is a “word of degree” or an imprecise term.
Claims which include such terms or words of degree must provide
some standard for measuring that degree, when read in light of the
specification as understood by one of ordinary skill in the art.
See Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc.,
731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). The phrase
“substantially parallel planar” was added to the claims in an
amendment (see the amendment dated Sep. 26, 2002, Paper No. 11).
Appellants have not identified any original disclosure that defines
or sets forth guidelines for the word “substantially,” nor have
appellants identified whether “substantially” modifies “parallel”
or “planar” or both. Therefore we conclude that, on this record,
one of ordinary skill in this art would have to use surmise and
conjecture to determine the metes and bounds of the claims when
read in light of the specification. See Ex parte Anderson, 21
USPQ2d 1241, 1249 (Bd. Pat. App. & Int. 1991); cf., York Products
Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-
73, 40 USPQ2d 1619, 1622-23 (Fed. Cir. 1996).
Appeal No. 2004-0906
Application No. 09/571,896
7
For the foregoing reasons, we determine that the examiner has
prima facie established that the claims on appeal are indefinite,
and appellants’ arguments have not sufficiently rebutted the
examiner’s conclusion. We therefore conclude that appellants
have failed to meet the requirements of the second paragraph of
35 U.S.C. § 112 and affirm the examiner’s rejection.
B. The Rejections under 35 U.S.C. § 102(b)
Although we have concluded as a matter of law that the claims
are indefinite, we analyze and review the rejections on appeal
which are based on prior art since the indefinite phrase
“substantially parallel planar” does not affect our review. Our
review does not involve any speculations and assumptions regarding
this phrase, as discussed below. Compare In re Steele, 305 F.2d
859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962).
We adopt the examiner’s findings of fact from Bumgarner
(Answer, page 3). Appellants note that the outcome of this issue
(the rejection under section 102(b) over Bumgarner) appears to
depend on the outcome of the issue under section 112, second
paragraph (Reply Brief, page 2). Appellants’ sole argument
regarding this rejection over Bumgarner is that the silo of this
reference has a substantially cylindrical wall, which does not
“substantially define a plane.” Brief, page 7. This argument
Appeal No. 2004-0906
Application No. 09/571,896
8
is not persuasive. Implicit in any analysis of a rejection under
section 102(b) is that the claim must first have been correctly
construed to define the scope and meaning of any contested
limitation. See Gechter v. Davidson, 116 F.3d 1454, 1457, 43
USPQ2d 1030, 1032 (Fed. Cir. 1997). As discussed above, we have
construed claim 1 on appeal as requiring that the “pair” of guide
rails “is substantially parallel planar” to a single wall but that
there is no explicit or implicit requirement in claim 1 on appeal
that the wall also substantially defines a plane.
Additionally, we note that the point at which the beam 4
crosses the silo wall may be considered as a plane tangential
to the silo wall (see the Answer, page 3, and page 5, first
paragraph). Accordingly, even assuming arguendo that appellants’
claim construction is correct, we determine that the wall of the
silo in Bumgarner defines a plane that is parallel planar to the
plane defining the pair of guide rails.
With regard ro the rejection of claim 7 on appeal, appellants
argue that Bumgarner fails to disclose or suggest that the pair of
guide rails is supported by and substantially parallel planar to
one wall, and the counterweight guide rail is supported by and
adjacent to the wall (Brief, page 9). This argument is not
persuasive for reasons discussed above with respect to the wall,
Appeal No. 2004-0906
Application No. 09/571,896
9
and by the examiner’s finding that the separate counterweight guide
rail (9) is supported by and adjacent the single wall of the silo
(Answer, page 3).
Appellants further argue that there is nothing in Bumgarner
to suggest that the rails 2,9 support the beam 4 (Brief, page 10;
Reply Brief, page 4). Appellants assert that the disclosure by
Bumgarner that the rails 2,9 can be either cables or bars supports
the conclusion that the beam supports the “rails” rather than the
converse (id.). This argument is not persuasive since, as noted by
the examiner (Answer, paragraph bridging pages 5-6), the beam 4 of
Bumgarner extends beyond the side of the silo and is attached at
its end to the bars 2, with the bars 2 supported at member 14, and
therefore the beam is at least partially supported by the bars or
rails 2 as required by claim 7 on appeal.
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
anticipation which has not been adequately rebutted by appellants.
Therefore we affirm the examiner’s rejection of claims 1, 3, 5-7
and 9 under section 102(b) over Bumgarner.
We also adopt the examiner’s findings from Crispen (Answer,
pages 3-4). Appellants argue that Crispen discloses a single
Appeal No. 2004-0906
Application No. 09/571,896
10
rail 3, not a pair of guide rails as required by claim 1 on appeal
(Brief, page 8). This argument is not well taken since the
examiner has pointed to the drawing of Crispen (Fig. 2) where the
single rail 3 is constructed in two parts, with a rear wall 6 and
a side wall 7, to form a channel formation which acts as the guide
rail (Crispen, page 1, right column, ll. 21-24).
Even assuming that the rail 3 can be considered a pair of
rails, appellants argue that there is no disclosure in Crispen that
the rail 3 and/or the counterweight enclosure 5 are supported by a
single wall, much less to a wall to which the alleged pair of rails
is substantially parallel planar (Brief, page 8; Reply Brief, page
3). Appellants disagree that the post 4 can be considered a “wall”
(Reply Brief, page 5). Appellants present similar arguments
against the rejection of claim 7 (Brief, pages 11-12; Reply Brief,
pages 4-5).
Appellants’ arguments are not persuasive. Although Crispen
discloses, as an example, that the post 4 is anchored to the floor
of the building, it is clear from the drawings that the elevator
rests along a stairway with the guide rail allowing the elevator
car to reach the floor landing 21 (see Figure 1). Accordingly, to
firmly anchor the elevator assembly at such heights, a skilled
artisan would have known to attach the wood post at least partially
Appeal No. 2004-0906
Application No. 09/571,896
11
to the stairway wall, thus allowing the artisan to be in possession
of the invention as now claimed. See In re Graves, 69 F.3d 1147,
1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995)(a reference anticipates
a claim if it discloses the claimed invention such that a skilled
artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the
invention).
Appellants argue that Crispen fails to disclose or suggest
that the paths of the elevator car and the counterweight are
oriented laterally and parallel to one another along the single
wall (Brief, page 8). This argument is not persuasive since
Crispen clearly discloses that the path of the elevator car and
the counterweight are oriented laterally (i.e., side by side) and
parallel to one another along the stairway wall (see Figure 3 and
the Answer, page 5, third and fourth full paragraphs).
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
anticipation which has not been adequately rebutted by appellants.
Therefore we affirm the examiner’s rejection of claims 1, 3, 5-7
and 9 under section 102(b) over Crispen.
Appeal No. 2004-0906
Application No. 09/571,896
3In the event of further or continuing prosecution before
(continued...)
12
C. The Rejections under 35 U.S.C. § 103(a)
We adopt the examiner’s findings of fact from Crispen
regarding the rejection of claim 10 (Answer, page 4). Since
appellants have not separately argued the rejection of this claim
(see the Brief and Reply Brief in their entirety), we summarily
affirm the examiner’s rejection.
With regard to the rejection of claims 4 and 8 under section
103(a) over Bumgarner or Crispen, the examiner concludes that
substituting a steel core belt for the ropes shown by the
references “would have been an obvious substitution of equivalents”
(Answer, page 4). Appellants argue that the examiner offers no
support for this assertion that coated steel belts were considered
equivalent to elevator ropes (Brief, page 13; Reply Brief, page 6).
We agree with appellants that, since the examiner has not offered
any support for this assertion of equivalency, the examiner has
not met the initial burden of establishing a prima facie case of
obviousness. See In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d
1430, 1434-45 (Fed. Cir. 2002). Therefore we reverse the
examiner’s rejection of claims 4 and 8 under section 103(a) over
Bumgarner or Crispen.3
Appeal No. 2004-0906
Application No. 09/571,896
3(...continued)
the examiner, the examiner and appellants should determine if
there was evidence, before the date of appellants’ invention,
that elevator safety codes required the use of coated steel belts
for elevator systems (see PCT/US00/22943 (of record), page 1, but
published after appellants’ filing date).
13
D. Summary
The rejection of claims 1 and 3-10 under 35 U.S.C. § 112, ¶2,
is affirmed. The rejections of claims 1, 3, 5-7 and 9 under
35 U.S.C. § 102(b) as anticipated by Bumgarner or Crispen are
affirmed. The rejection of claim 10 under 35 U.S.C. § 103(a) over
Crispen is affirmed.
The rejections of claims 4 and 8 under 35 U.S.C. § 103(a) over
Bumgarner or Crispen are reversed.
The decision of the examiner is affirmed.
Appeal No. 2004-0906
Application No. 09/571,896
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-0906
Application No. 09/571,896
15
OTIS ELEVATOR COMPANY
INTELLECTUAL PROPERTY DEPARTMENT
10 FARM SPRINGS
FARMINGTON, CT 06032