Ex Parte Senger et alDownload PDFPatent Trial and Appeal BoardDec 15, 201613496232 (P.T.A.B. Dec. 15, 2016) Copy Citation 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. 13/496,232 03/15/2012 Alois Senger 60469-568PUS1; 4805-US 5939 64779 7590 12/19/2016 CARLSON GASKEY & OLDS INTELLECTUAL PROPERTY DEPARTMENT 400 W MAPLE STE 350 BIRMINGHAM, MI 48009 EXAMINER HESS, DOUGLAS A ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 12/19/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): frederic .tenney@otis.com ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALOIS SENGER and GOETZ METZDORF Appeal 2015-001341 Application 13/496,232 Technology Center 3600 Before LINDA E. HORNER, MITCHELL G. WEATHERLY, and ERIC C. JESCHKE, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alois Senger and Goetz Metzdorf (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Action, dated January 30, 2014 (“Final Act.”), rejecting claims 21-35, 42, and 43.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as Otis Elevator Company. Appeal Br. 1. 2 Claims 1-20 are canceled, and claims 36—41 are allowed. Final Act. 1. Appeal 2015-001341 Application 13/496,232 CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to “truss construction for a passenger conveyor.” Spec. 1,1. 4. Claims 21 and 35 are independent. Claim 21 is reproduced below. 21. Truss construction for a passenger conveyor, comprising at least one self-supporting element extending in a conveying direction of the passenger conveyor, wherein the self-supporting element is formed with at least one rail portion for guiding step chain rollers or step rollers, and wherein the self-supporting element is a roller molded element. Independent claim 35 is directed to a passenger conveyor comprising a truss construction including the same elements as recited in claim 21. Appeal Br. 9 (Claims App.). REJECTIONS The Final Action included the following grounds of rejection: 1. Claims 21-33, 35, 42, and 43 under 35 U.S.C. § 102(b) as anticipated by Numberg (US 6,685,002 Bl, issued February 3, 2004). 2. Claim 34 under 35 U.S.C. § 103(a) as unpatentable over Numberg. ANALYSIS First Ground of Rejection The Examiner’s anticipation rejection of independent claims 21 and 35 amounts to reproduced figures from Numberg annotated to indicate the claimed tmss features and a finding that Numberg discloses the “truss arrangement can be accomplished by ‘other traditional methods.’” Final 2 Appeal 2015-001341 Application 13/496,232 Act. 2 (Examiner quoting Numberg, col. 2,11. 51-58 and referring to previously attached marked-up drawing figure sheets of Numberg). In the annotated figures, the Examiner indicates that the vertical portions of lower module 30 shown in Figure 3 constitute a pair of self-supporting elements. The Examiner also identifies rail portions in Figure 3 having rollers supported thereon. Because this is an anticipation rejection, the question presented is whether Numberg discloses by a preponderance of the evidence a self- supporting element “formed with at least one rail portion” and that “is a roller molded element.” The Examiner interpreted the language of independent claims 21 and 35 to encompass a self-supporting element having at least “one piece of the self-supporting element. . . constmed as ‘roller molded’” and determined that “[t]he claims do not require the roller molded element is one piece.” Ans. 4. Thus, according to the Examiner’s interpretation of the claim language, if Numberg discloses a self-supporting element including a roller-molded portion and having a rail portion attached to the roller-molded portion after forming the roller-molded portion, such an assembly would anticipate the independent claims. Appellants’ Specification describes “[e]ach of the self-supporting elements 4, 16 ... is formed comprising three rail portions 6, 8, 9 . . . .” Spec. 4,11. 33-35; see also id. at 7,11. 1-2 (“Each of the self[-]supporting elements 4, 16 also comprises two roller molded rail portions 6, 8”), see also id. at 11. 15-16 (“Besides the first and second rail portions 6, 8 a third rail portion 9 is formed within the self[-]supporting elements 4, 16”). Figures 2 and 3 show self-supporting elements 4, 16, each including rail portions 6, 8, and 9 formed of a single sheet of material that has been roller-molded to 3 Appeal 2015-001341 Application 13/496,232 form the rail portions and remaining portions of the self-supporting elements. The Specification describes the self-supporting elements shown in Figure 2 as being “formed by applying a roller molding process to an appropriate sheet of metal.” Spec. 5,11. 4-6. The Specification distinguishes such self-supporting elements formed by roller molding with prior art truss construction that requires “a large number of different elements which have to be produced and mounted separately” and requires “welding done in the factory.” Id. at 3,11. 1-8. We determine the claim language “wherein the self-supporting element is formed with at least one rail portion” and “wherein the self- supporting element is a roller molded element,” when interpreted in light of the Specification, would be understood by one of ordinary skill in the art to require that the rail portion is formed as part of the self-supporting element by roller molding. In other words, the Examiner’s interpretation of the claim as encompassing a roller-molded piece of the self-supporting structure attached to a rail portion is unreasonably broad in light of the claim language when read in view of the Specification. Even if the Examiner’s interpretation were correct, Numberg does not appear to clearly show or describe a self-supporting element that is formed with at least one rail portion and is a roller-molded element. In the lower module 30 of Numberg, relied on by the Examiner for the self-supporting element, the vertical portion is more likely joined to the rails in the factory after the vertical portion is formed. See, e.g., Numberg, col. 3,11. 61-63 (describing lower module 30 is “preassembled and fixture in the factory”). Thus, we agree with Appellants that “[t]he Examiner’s suggestion that more than one piece of the Numberg reference could be considered a self- 4 Appeal 2015-001341 Application 13/496,232 supporting element does not establish that a rail portion is formed as part of the self-supporting element.” Reply Br. 2; see also Appeal Br. 3 (Appellants arguing “the drawings that the Examiner relies upon do not show a self- supporting element formed with a rail portion as claimed”). For these reasons, we do not sustain the rejection of independent claims 21 and 35, or their dependent claims 22-33, 42, and 43, under 35 U.S.C. § 102(b) as anticipated by Numberg. The Examiner relies on the same unreasonably broad reading of the claim language in the rejection of claim 34 as unpatentable over Numberg. Final Act. 3 (Examiner determining that the claimed shape of the pairs of self-supporting elements would be an obvious matter of design choice). Thus, for the same reasons provided supra, we likewise do not sustain the rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable over Numberg. DECISION The decision of the Examiner to reject claims 21-35, 42, and 43 is REVERSED. REVERSED 5 Copy with citationCopy as parenthetical citation