Ex Parte Wesson et alDownload PDFPatent Trial and Appeal BoardFeb 3, 201512089764 (P.T.A.B. Feb. 3, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN P. WESSON, MARK S. THOMPSON, JAMES R. IRISH, WILLIAM A. VERONESI, JOHN T. PITTS, WILLIAM C. PERRON, ARY MELLO, HUGH JAMES O’DONNELL, KATHRYN R. SHERRICK, RICHARD PHILLIPS, and JOTTI PIERANGELO ____________ Appeal 2013-003949 Application 12/089,764 Technology Center 1700 ____________ Before CHUNG K. PAK, CHARLES F. WARREN, and ROMULO H. DELMENDO, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 2 through 12, 15 through 20, 22 through 35, and 38 through 44, which are all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b). The subject matter on appeal is directed to “load bearing assemblies for use in elevator systems.” (Spec. 1, ll. 5–10.) The load bearing assemblies include a 1 Appeal Brief filed July 9, 2012 (“App. Br.”) at 5–14 and Reply Brief filed January 18, 2013 (“Reply Br.”) at 1–9. 2 Final Rejection mailed December 9, 2011(“FR.”) at 1–10 and the Examiner’s Answer mailed November 19, 2012 (“Ans.”) at 2–12. Appeal 2013-003949 Application 12/089,764 2 polymer jacket at least partially surrounding at least one tension member, wherein “[t]he polymer jacket has a first portion that contacts the tension member and a second portion that defines an exterior surface of the jacket.” (Spec. 2, l. 31 to 3, l. 2.) The second portion of the jacket has at least a partially different polymer composition than that employed in the first portion of the jacket. (Spec. 3, ll. 2–4.) Figures 2 and 3, which illustrate one of such load bearing assemblies and one method of making such load bearing assemblies, are reproduced below: Figure 2 depicts load bearing assembly 30 having a plurality of elongated tension members 32 surrounded by polymer jacket 34 having first and second portions 38 and 40 made of different polymer compositions. (Spec. 4, ll. 3–16.) Figure 3 depicts “an example method of making the load bearing member assembly 30 of Figure 2.” (Spec. 6, ll. 1–2.) According to page 6, lines 9 through 27, of the Specification: In one example, a single polymer composition is provided from the polymer supply 54 and applied onto the tension members 32 at the jacket application station 52. The surface treating station 56 then introduces at least one additional component onto at least the exterior surface 40 of the jacket 34 to achieve a desired surface characteristic. Appeal 2013-003949 Application 12/089,764 3 The addition of a surface-altering component is considered for purposes of this discussion to alter the polymer composition of at least the second portion 38 that includes the exterior surface 40. In one [other] example, a small amount of a traction modifying agent is applied to the hot polyurethane material of the jacket 34 as it exits an extrusion mold. Example traction modifying agents include wax, oil, ester amides, phthalate esters, polyolefins and mold release agents. Applying such a component in a sufficiently small amount modifies the exterior surface 40 of the jacket 34 to provide the desired traction level within an elevator system, for example. Application of the additional component in some examples diffuses that component into the polymer composition of the outer portion 38 of the jacket 34, which changes that composition compared to a remainder of the jacket 34. Introducing the additional component near the exterior surface 40 to reduce friction, for example, has no impact on the example first portion 36 of the jacket 34 and, therefore, does not interfere with any pull out strength characteristics of the jacket 34. [(Emphasis added.)] In another example, different polymers are used to form such different polymer compositions in the first and second portions of the jacket. (Spec. 5, ll. 13–16 and 7, ll. 18–20.) The first and second portions of the jacket “need not be in layered form.” (Spec. 4, ll. 15–18.) “In some examples, there will be a gradual distinction between the material compositions of the interior portion (i.e. the first portion 36) of a jacket and the portion defining the exterior surface (i.e., second portion 38).” (Spec. 4, ll. 18–21.) “The exterior surface may be the same around an entire exterior of the assembly 30 . . . or it may be different on various portions of the exterior.” (Spec. 4, ll. 22–24.) Appeal 2013-003949 Application 12/089,764 4 Details of the appealed subject matter are recited in representative independent claims 2, 4, 7, and 12,3 which are reproduced below from the Claims Appendix of the Appeal Brief: 2. A load bearing assembly for use in an elevator system, comprising: at least one elongated tension member; and a polymer jacket at least partially surrounding the tension member, the polymer jacket having a first portion that interfaces with the tension member and a second portion that defines an exterior surface of the jacket, the first portion comprising a first polymer composition and the second portion comprising a second, at least partially different polymer composition, wherein the first polymer composition comprises a first polyurethane and the second polymer composition comprises a second, different polyurethane. 4. The assembly of claim 7, wherein the first polymer composition comprises a selected polyurethane and the second polymer composition comprises the selected polyurethane and at least one other component distinct from components in the first polymer composition. 7. A load bearing assembly for use in an elevator system, comprising: at least one elongated tension member; and a polymer jacket at least partially surrounding the tension member, the polymer jacket having a first portion that interfaces with the tension member and a second portion that defines an exterior surface of the jacket, the first portion comprising a first polymer composition and the second portion comprising a second, at least partially different polymer composition, wherein the first polymer composition includes a base component comprising at least one of a polyurethane, nylon, polyester, polyolefin, fluorinated polymer, halogenated polymer, vulcanizable natural rubber, synthetic rubber or silicone and the second polymer 3 Appellants have presented substantive arguments directed to common limitations in independent claims 2, 3, and 26, common limitations in independent claims 7 and 27, common limitations in dependent claims 4 and 24, and common limitations in independent claims 12 and 35. (App. Br. 5–14.) Appellants have not presented any separate arguments for the remaining claims on appeal. (Id.) Therefore, for purposes of this appeal, we select claims 2, 4, 7, and 12 as representative and decide the propriety of the Examiner’s § 103(a) rejections of record based on these claims alone consistent with 37 C.F.R. § 41.37(c)(1)(iv)(2012). Appeal 2013-003949 Application 12/089,764 5 composition comprises the base component of the first polymer composition and at least one other component distinct from components in the first composition. 12. A load bearing assembly for use in an elevator system, comprising: at least one elongated tension member; and a polymer jacket at least partially surrounding the tension member, the polymer jacket having a first portion that interfaces with the tension member and a second portion that defines an exterior surface of the jacket, the first portion comprising a first polymer composition and the second portion comprising a second, at least partially different polymer composition, wherein at least the second polymer composition comprises at least one of a fluoropolymer having a molecular weight that is greater than approximately 800, an amide derivative of a fatty acid, an ester derivative of a fatty acid, or at least one anisotropic material that includes molecules that align in a pattern that allows slip between the molecules in a first direction and resists slip in a generally perpendicular direction. (App. Br. 15–17 (emphasis added).) The Examiner maintains the following grounds of rejection: 1. Claims 3, 23, 26, 30, and 34 under 35 U.S.C. § 102(a) or (b) as anticipated by Mitsui,4 as explained by DOTMAR5; 4 The Examiner identifies WO 03/101876 A1 published December 11, 2003 and EP 1 508 544 A1 published February 23, 2005 as “Mitsui” and relies upon the latter European publication as the English translation of WO 03/101876 A1. (Ans. 2.) WO 03/101876 A1 is the international application of the latter European publication. (See the cover page of EP 1 508 544 A1.) 5 Although the Examiner relies upon DOTMAR Engineering Plastic having an unknown publication date (“DOTMAR”) in the statement of the rejection, the Examiner has not identified any teaching in DOTMAR to explain the teachings of Matsui in the body of the rejection. (Ans. 2–3.) Appeal 2013-003949 Application 12/089,764 6 2. Claims 2 through 11, 18 through 20, 23 through 34, and 41 through 44 under 35 U.S.C. § 102(a) or (e) as anticipated by the disclosure of Thompson ’2556 or Thompson ’8817; 3. Claims 12, 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) as unpatentable over Thompson ’255 in view of Fix8; and 4. Claims 12, 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) as unpatentable over Mitsui, as explained by DOTMAR, in view of Fix. (FR 3–11 and Ans. 2–12.)9 DISCUSSION Upon consideration of the evidence on this record in light of the arguments advanced by the Examiner and Appellants, we determine that Appellants have not identified reversible error in the Examiner’s finding that Thompson ’255 or Thompson ’881 describes the subject matter recited in claims 4 through 11 and 27 through 29 within the meaning of 35 U.S.C. § 102(a) or (e). We also determine that Appellants have not identified reversible error in the Examiner’s determination that the collective teachings of Thompson ’255 and Fix would have suggested the subject matter recited in claims 12, 15 through 17, 35, and 38 through 40 within the meaning of 35 U.S.C. § 103(a) and the collective teachings of Mitsui, as explained by DOTMAR, and Fix would have suggested the subject matter recited in claim 12 within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the 6 WO 2005/094255 A2 published October 13, 2005 (“Thompson ’255”). 7 WO 2006/085881 A1 published August 17, 2006 (“Thompson ’881”). 8 US 3,656,360 issued to Fix on April 18, 1972 (“Fix”). 9 The Examiner has withdrawn the rejection of claims 12, 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) as unpatentable over Thompson ’881 in view of Fix. (Ans. 12.) Appeal 2013-003949 Application 12/089,764 7 Examiner’s § 102(a) or (e) and§ 103(a) rejections of the above claims based on the above-identified prior art references for the reasons set forth in the Final Rejection and the Answer. However, we reverse the remaining rejections for the reasons set forth in the Appeal Brief and the Reply Brief. We add the following primarily for emphasis and completeness. 35 U.S.C. § 102 In a rejection for anticipation under 35 U.S.C. § 102, “every element of the claimed invention must be identically shown in a single reference . . . [and] [t]hese elements must be arranged as in the claim under review.” In re Bond, 910 F.2d 831, 832 (1990) (internal quote and citations omitted). “[E]xtrinsic evidence may be considered [in the anticipation rejection] when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). Nevertheless, “differences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). To prevail in an appeal to this Board, Appellant must adequately explain or identify reversible error in the Examiner’s § 102 rejections. See 37 C.F.R. § 41.37(c)(1)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that while “the applicant must identify to the Board what the examiner did wrong, . . . the examiner retains the burden to show [unpatentability]”). Applying the above principles of law to the present facts, we determine the propriety of the Examiner’s § 102 rejections. We turn first to the Examiner’s rejection of claims 3, 23, 26, 30, and 34 under 35 U.S.C. § 102 as anticipated by Mitsui, as explained by DOTMAR. According to the Examiner, Mitsui’s strands, Appeal 2013-003949 Application 12/089,764 8 inner layer coating body 27 composed of a polyethylene resin, and outer layer coating body 60 composed of a polyurethane resin in its Figure 2 correspond to the plurality of tension members and the first and second portions of the polymer jacket, respectively. (Ans. 2–3 and Mitsui 3 ¶¶ [0015]–[0021] and Fig. 2.)10 However, as explained by Appellants, inner layer coating body 27 of Mitsui’s Figure 2 does not surround all of the tension members (strands) in a load bearing assembly as required by claims 3, 23, 26, 30, and 34. (App. Br. 5–7.) The Examiner has not relied upon DOTMAR to explain this deficiency in Mitsui. (Ans. 2–3.) Accordingly, we reverse the Examiner’s decision rejecting claims 3, 23, 26, 30 and 34 under 35 U.S.C. § 102(a) or (b) as anticipated by Mitsui, as explained by DOTMAR. We turn next to the Examiner’s rejection of claims 2 through 11, 18 through 20, 23 through 34, and 41 through 44 under 35 U.S.C. § 102 as anticipated by Thompson ’255 or Thompson ’881. As found by the Examiner, Thompson ’255 or ’881 discloses a load bearing assembly comprising a plurality of tension members and a polyurethane jacket surrounding and interfacing all of the tension members, wherein during the formation of a polyurethane jacket, an amide rich layer forms on an exterior surface of the polyurethane material and various additives, such as waxes or mold release agent, migrate to the exterior surface of the polyurethane material to form a thin layer. (Ans. 4–8 and 14–18; see also Thompson ’255, p. 9, ll. 11–25 and Thompson ’881, p. 2, ll. 1–6 and p. 4, l. 20 to p. 5, l. 2.) The 10 The Examiner does not rely upon outer layer 28 in Mitsui’s Figure 2 as corresponding to the first portion of a polymer jacket. (Ans. 3–4.) Mitsui is also silent as to the type of material employed in forming outer layer 28 which surrounds all of tension members in its load bearing assembly. (Mitsui 3 ¶¶ [0018] and [0019].) Appeal 2013-003949 Application 12/089,764 9 Examiner also found that Thompson ’255 or ’881 teaches removing only part of the amide rich layer from the exterior surface of the polyurethane material chemically, mechanically or thermally to provide an enhanced frictional or traction characteristic. (Ans. 4–5 and 7; see also Thompson ’255, p. 2, ll. 20–26 and p. 9, l. 30 to p. 10, l. 13.) The Examiner’s designation of Thompson’s inner part of the jacket comprising pure polyurethane material surrounding and interfacing all of tension members as corresponding to the recited first portion of the jacket and Thompson’s outer part of the jacket containing the same pure polyurethane with an amide rich layer and/or additives as corresponding to the recited second portion of the jacket meets the two different polymer composition requirements for the first and second portions of the polymer jacket recited in claims 4 through 11 and 27 through 29. On this record, Appellants have not identified any reversible error in the Examiner’s finding that Thompson ’255 or Thompson ’881 describes or teaches the subject matter recited in claims 4 through 11 and 27 through 29. However, claims 2, 3, 18 through 20, 23 through 26, 30 through 34, and 41 through 44 are on different footing. These claims require selecting two different polymers from a list of specific polymers identified as the base components of the first and second polymer compositions used for forming the first and second portions of the polymer jacket. However, as explained by Appellants, the Examiner has not adequately explained how and why the second part containing pure polyurethane and amide rich layer in Thompson ’255 or ’881 satisfies the second portion containing the recited specific polymer different from the pure polyurethane employed in the first portion of the jacket. (App. Br. 7–12.) Accordingly, we affirm the Examiner’s decision rejecting claims 4 through 11 and 27 through 29 under 35 U.S.C. § 102(a) or (e) as anticipated by Thompson ’255 or ’881, but reverse the Examiner’s decision rejecting 2, 3, 18 through 20, 23 Appeal 2013-003949 Application 12/089,764 10 through 26, 30 through 34, and 41 through 44 under 35 U.S.C. § 102(a) or (e) as anticipated by Thompson ’255 or ’881. 35 U.S.C. § 103 Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a determination of: (1) the scope and content of the prior art; (2) the differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations, if necessary. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The Supreme Court of the United States reaffirmed the analytical framework set out in Graham v. John Deere Co. “[A]nalysis [of whether the subject matter of a claim would have been obvious under § 103] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court 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. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. To prevail in an appeal to this Board, Appellant must adequately explain or identify reversible error in the Examiner’s § 103 rejections. See 37 C.F.R. § 41.37(c)(1)(iv) (2012); see also In re Jung, 637 F.3d at 1365–66. Applying the above principles of law to the present facts, we determine the propriety of the Examiner’s § 103(a) rejections. We turn first to the Examiner’s rejection of claims 12, 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) as unpatentable over Thompson ’255 in view of Fix. As discussed supra, Thompson ’255 teaches surrounding all of the tension members with a polyurethane polymer jacket to form a load bearing assembly. Although Appeal 2013-003949 Application 12/089,764 11 Thompson ’255 does not teach employing a fluoropolymer having a molecular weight that is greater than approximately 800 in the second portion of its polyurethane jacket as recited in the above claims , the Examiner found, and Appellants have not disputed, that Fix teaches a polyurethane composition containing polyfluorohydrocarbon resin particulates (e.g., a copolymer of tetrafluoroethylene and hexafluoropropylene) and other additives, which is used to form a jacket for tension members used in belts for performing the driving function on track vehicles while contacting pulleys, similar to the load bearing assembly taught by Thompson. (Compare Ans. 10 with App. Br. 12–13 and Reply Br. 8–9.) Moreover, as indicated supra, the Examiner found that Thompson ’255 teaches that the additives to the polyurethane material, which are inclusive of polyfluorohydrocarbon resin particulates, migrate to the exterior surface of the polyurethane material during the formation of the jacket to form part of the second portion of the jacket. According to column 3, lines 37–42, of Fix, such polyfluorohydrocarbon resin particulates have a very low coefficient of friction and high lubricity and “are [chemically inert and] generally prepared by polymerizing tetrafluoroethylene or copolymerizing tetrafluoroethylene and hexafluoropropylene . . . to form very long high molecular weight polymers . . . [and] have a specific gravity of from about 2 to about 2.3.” Thus, notwithstanding Appellants’ arguments to the contrary, the Examiner’s finding that the polyfluorohydrocarbon resin particulates taught by Fix include those having the claimed high molecular weight, e.g., those having at least eight repeat monomers to form a polyfluorohydrocarbon resin having a molecular weight greater than approximately 800, is supported by the evidence of record.11 (Ans. 19.) Finally, 11 See In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003)(“In cases involving overlapping ranges, we and our predecessor court have consistently held that even Appeal 2013-003949 Application 12/089,764 12 there is no dispute that Fix teaches enhancing resistant to the failure of a load bearing polyurethane material via adding such polyfluorohydrocarbon resin particulates to the polyurethane material. (Compare Ans. 10 with App. Br. 12–13 and Reply Br. 8–9; see also Fix, col. 1.) On this record, Appellants have not identified any reversible error in the Examiner’s determination that one of ordinary skill in the art would have been led to employ the polyurethane composition containing polyfluorohydrocarbon resin particulates having the recited molecular weight suggested by Fix in forming the more failure resistant polyurethane polymer jacket of the load bearing assembly of Thompson ’255, with a reasonable expectation of forming the recited first and second portions of the jacket. Accordingly, we affirm the Examiner’s decision rejecting claims 12, 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) as unpatentable over Thompson ’255 in view of Fix.12 We turn next to the Examiner’s rejection of claims 12, 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) as unpatentable over Mitsui, as explained by DOTMAR, in view of Fix. With respect to claim 12, Mitsui teaches a load bearing assembly comprising a plurality of tension members, inner layer coating body 27 composed of a polyethylene resin surrounding and interfacing some of the tension members, and outer layer coating body 60 composed of a polyurethane resin surrounding inner layer coating body 27 as indicated supra. Although Mitsui does not teach that its outer layer coating body made of a a slight overlap in range establishes a prima facie case of obviousness.”) 12 We note that claim 15 through 17 are dependent on independent claim 3 which includes a polymer jacket having a second portion comprising a fluorinated polymer. Although the Examiner relies upon Fix to teach a fluorinated polymer in the second portion of the polymer jacket as discussed supra, we note that the Examiner has not included independent claim 3 in this rejection. Appeal 2013-003949 Application 12/089,764 13 polyurethane resin (corresponding to the second portion of the jacket recited in the claims) contains “a fluoropolymer having a molecular weight that is greater than approximately 800,” the Examiner found, and Appellants have not disputed, that Fix teaches using polyfluorohydrocarbon resin particulates (e.g., a copolymer of tetrafluoroethylene and hexafluoropropylene) and other additives in a polyurethane material used to form a jacket for tension members of belts used in performing the driving function on track vehicles while contacting pulleys, similar to the load bearing assembly taught by Mitsui. (Compare Ans. 10–11 with App. Br. 12–14 and Reply Br. 8–9.) The polyfluorohydrocarbon resin particulates, according to column 3, lines 37–42, of Fix, have a very low coefficient of friction and high lubricity and are chemically inert and “are generally prepared by polymerizing tetrafluoroethylene or copolymerizing tetrafluoroethylene and hexafluoropropylene . . . to form very long high molecular weight polymers . . . [and] have a specific gravity of from about 2 to about 2.3.” Thus, notwithstanding Appellants’ arguments to the contrary, the Examiner’s finding that the polyfluorohydrocarbon resin particulates taught by Fix include those having the claimed high molecular weight, e.g., those having at least eight repeat monomers to form a polyfluorohydrocarbon resin having a molecular weight greater than approximately 800, is supported by the evidence of record. (Ans. 19.) Finally, there is no dispute that Fix teaches enhancing resistance to the failure of a load bearing polyurethane material via adding such polyfluorohydrocarbon resin particulates to the polyurethane material. (Compare Ans. 10 with App. Br. 12–13 and Reply Br. 8–9; see also Fix, col. 1.) On this record, Appellants have not identified any reversible error in the Examiner’s determination that one of ordinary skill in the art would have been led to employ the polyurethane composition containing polyfluorohydrocarbon resin particulates having the recited molecular weight Appeal 2013-003949 Application 12/089,764 14 suggested by Fix in forming the polyurethane outer coating body of the polymer jacket of the load bearing assembly of Mitsui, with a reasonable expectation of improving the failure resistant property of the load bearing assembly taught by Mitsui. However, claims 15 through 17, 35, and 38 through 40 are on different footing. These claims, unlike claim 12, require that the first portion of the jacket surrounds and interfaces all of the tension members in a load bearing assembly. However, as explained by Appellants, the Examiner has not shown that Mitsui teaches such feature. (App. Br. 13–14.) Nor has the Examiner relied upon Fix or DOTMAR to teach such missing feature. (Ans. 10–11.) Accordingly, we affirm the Examiner’s decision rejecting claim 12 under 35 U.S.C. § 103(a) as unpatentable over Mitsui, as explained by DOTMAR, in view of Fix, but reverse the Examiner’s decision rejecting claims 15 through 17, 35, and 38 through 40 under 35 U.S.C. § 103(a) over Mitsui, as explained by DOTMAR, in view of Fix. ORDER In view of the foregoing, the decision of the Examiner to reject the claims on appeal 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)(1)(iv). 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