OTIS ELEVATOR COMPANY

Patent Trials and Appeals Board

Feb 14, 2020

14893227 - (D) (P.T.A.B. Feb. 14, 2020)

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.
14/893,227 11/23/2015 Zlatko Strbuncelj 73199US02 4350
87423 7590 02/14/2020
Cantor Colburn LLP - Otis Elevator
INTELLECTUAL PROPERTY DEPARTMENT
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
TRAN, DIEM M
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
02/14/2020 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
frederic.tenney@otis.com
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZLATKO STRBUNCELJ, JAMES L. HUBBARD,
ZBIGNIEW PIECH, MARTIN J. HARDESTY, and GLEN LEVENSON
Appeal 2019-004473
Application 14/893,227
Technology Center 3600
Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–16 under 35 U.S.C.
§ 102(a)(1)/(a)(2) as anticipated by Strbuncelj et al. (US 2012/0112577 A1,
published May 10, 2012, hereinafter “Strbuncelj”). We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Otis Elevator
Company. Appeal Br. 1.
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Application 14/893,227

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “reducing the size of an elevator
machine, comprising: establishing an envelope associated with a sheave of
the machine, and recessing at least one bearing associated with the machine
at least partially within the envelope.” Spec. ¶ 3. Claim 12, reproduced
below, is illustrative of the claimed subject matter.
12. An elevator machine comprising:
a stationary shaft;
a stator radially outward of the stationary shaft, the stator
coupled to the shaft;
a rotor radially outward of the stator;
a sheave radially outward of the rotor, the sheave coupled
to the rotor, the sheave configured to support a rope, a cable or
a belt configured to facilitate movement of an elevator car
within an elevator system;
a first bearing positioned about the stationary shaft, the
first bearing positioned at least partially within an envelope of
the sheave; and
a second bearing positioned about the stationary shaft,
the second bearing positioned at least partially within the
envelope of the sheave.
OPINION
The Examiner finds that Strbuncelj discloses an elevator machine
(drive machine 10) comprising all of the elements recited in claim 12,
including, in relevant part, first and second bearings 42 positioned at least
partially within the envelope of the sheave, which the Examiner reads on
Strbuncelj’s “singular structure” comprising sheave 18 and cylinder 16.
Final Act. 3–4 (citing Strbuncelj ¶ 12, ll. 7–11; Figs. 2–3). According to the
Examiner, because bearings 42 are positioned at least partially inside side
portions 32 of cylinder 16, bearings 42 are positioned at least partially within
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an envelope of the “singular structure” made up of sheave 18 and cylinder
16 (i.e., the structure on which the Examiner reads the claimed “sheave”).
Id. at 4.
Appellant does not contest the Examiner’s finding that Strbuncelj’s
bearings are positioned at least partially within an envelope of the “singular
structure” made up of sheave 18 and cylinder 16. See Appeal Br. 4–5.
Rather, Appellant contends that “[e]lements 16 and 32 in Strbuncelj are not
part of the sheave, as the sheave is defined in claim 12,” and that “[s]ide
portions 32 are part of cylinder 16, not sheave 18.” Id. at 4. Appellant
argues that “[t]he ‘sheave’ of claim 12 is ‘configured to support a rope, a
cable or a belt configured to facilitate movement of an elevator car within an
elevator system’ and element 16 of Strbuncelj does not provide this role.”
Id. at 4–5.
Appellant’s argument that cylinder 16, or side portions 32 of cylinder
16, are not configured to support a rope, a cable, or a belt is not responsive
to the Examiner’s rejection because the Examiner does not read the claimed
“sheave” solely on cylinder 16 or side portions 32 thereof. Rather, as we
noted above, the Examiner reads the claimed sheave on the “singular
structure” made up of sheave 18 and cylinder 16. Final Act. 3; see
Strbuncelj ¶ 12, ll. 7–8 (disclosing an embodiment in which “cylinder 16 and
sheave 18 are a singular structure”). This “singular structure” includes
sheave 18, which “contains grooves for ropes or cables that attach to the
elevator car and/or counterweight” (Strbuncelj ¶ 12, ll. 8–10), and, thus, is
“configured to support a rope, a cable or a belt configured to facilitate
movement of an elevator car within an elevator system” as recited in claim
12.
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Appellant argues that the fact that Strbuncelj discloses that
cylinder 16 and sheave 18 may be attached or made from a
singular structure . . . does not alter the fact that cylinder 16 is
not part of a ‘sheave configured to support a rope, a cable or a
belt configured to facilitate movement of an elevator car within
an elevator system’ as recited in claim 12.”
Appeal Br. 4. By way of analogy, Appellant reasons that
[f]or example, a knife blade may be secured to a handle (either
integrally or not) but there is no debating that the handle is not
equivalent to the blade. In the present case, the cylinder 16 in
Strbuncelj is not part of sheave 18 and thus Strbuncelj cannot
anticipate claim 12.
Id. at 5.
To the extent that Appellant urges us either to construe a “sheave
configured to support a rope, a cable or a belt configured to facilitate
movement of an elevator car within an elevator system” in claim 12 as
confined to a surface that directly supports a rope, a cable, or a belt, or to
construe “an envelope of the sheave” as being coextensive only with the
surface of the sheave that directly supports a rope, a cable, or a belt, the
underlying disclosure in Appellant’s Specification and drawings is not
consistent with such a construction. As shown in Appellant’s Figures 5 and
6, for example, the portion of the surface of sheave 410 provided with
grooves so as to be configured to support a rope, a cable, or a belt does not
extend far enough to encompass or envelope any portion of either bearing
510. Even if the portions of the surface of Appellant’s sheave 410 located
between the grooved portion and the radially outwardly extending flange
portions at the right and left ends of sheave 410 were considered capable of
supporting a rope, a cable, or a belt, and thus “configured to support a rope,
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a cable or a belt configured to facilitate movement of an elevator car within
an elevator system,” this portion of the sheave does not appear to encompass
or envelope any portion of either bearing 510. Indeed, the only portions of
Appellant’s sheave 410 that appear to extend far enough to encompass or
envelope any portion of bearings 510 are the flanged end portions, which
appear to be obstructed by securing structure and, thus, are not capable of, or
configured for, supporting a rope, a cable, or a belt.
The component of Appellant’s disclosed invention that Appellant
identifies as “sheave 410” includes both a first portion that directly supports
a rope, a cable, or a belt (e.g., by providing a horizontal surface to support a
rope, a cable, or a belt through direct contact therewith), and second portions
that do not support a rope, a cable, or a belt directly, but serve other support
functions, such as supporting the first portions and thereby facilitating
securement of the sheave in the elevator machine. Similarly, Strbuncelj’s
“singular structure” forming cylinder 16 and sheave 18 includes a first
portion (sheave 18, or at least part of sheave 18) that supports a rope and
second portions (side portions 32 of cylinder 16) that support the first
portion and secure it within the drive machine. See Strbuncelj ¶ 20; Fig. 3.
Thus, the Examiner’s reading of Strbuncelj’s “singular structure” forming
cylinder 16 and sheave 18 on the “sheave” claimed in claim 12 is consistent
with the disclosure in the present application.
Further, anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond,
910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int’l Trade
Comm’n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). Thus, the fact that
Strbuncelj uses the term “sheave” to identify only part of the structure on
which the Examiner reads the claimed “sheave” does not undermine the
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Examiner’s finding of anticipation when Appellant’s Specification describes
and illustrates the claimed sheave 410 as encompassing other structures that
Strbuncelj characterizes as part of a “singular structure.”
For the above reasons, Appellant does not apprise us that the
Examiner errs in reading the claimed “sheave” on Strbuncelj’s “singular
structure” forming cylinder 16 and sheave 18 and, thus, does not apprise us
of error in the Examiner’s finding that Strbuncelj anticipates the subject
matter of claim 12. Accordingly, we sustain the rejection of claim 12, as
well as dependent claims 13–16, for which Appellant does not present any
separate arguments and which, thus, fall with claim 12. See Appeal Br. 2–5;
37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to
decide the appeal as to a single ground of rejection of a group of claims
argued together).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–16 102(a)(1)/(a)(2) Strbuncelj 12–16

TIME PERIOD FOR RESPONSE
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).
AFFIRMED