ThyssenKrupp Elevator AG

Patent Trials and Appeals Board

Jun 28, 2021

2021000417 (P.T.A.B. Jun. 28, 2021)

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.
14/695,280 04/24/2015 Christian Breite 0119378.0614835 1048
26874 7590 06/28/2021
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
TRAN, DIEM M
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
06/28/2021 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN BREITE, MICHAEL BRAY, and
THOMAS FELIS
Appeal 2021-000417
Application 14/695,280
Technology Center 3600
Before JILL D. HILL, CARL M. DEFRANCO, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, 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 1, 2, 4–6, 10–12, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as ThyssenKrupp
Elevator AG. Appeal Br. 2.
Appeal 2021-000417
Application 14/695,280
2
CLAIMED SUBJECT MATTER
Appellant’s invention relates to an elevator hoisting member including
a plurality of carbon nanotube structures. Claims 1 and 20 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A hoisting member for moving an elevator car in an
elevator system, wherein the hoisting member comprises:
a strength component comprising a plurality of carbon
nanotube structures located within a core of the hoisting member;
a matrix material comprising a first polymer material that
surrounds the plurality of carbon nanotube structures and binds
the plurality of carbon nanotube structures together; and
wherein a select one or both of power and data are
transmitted to and from the elevator car via at least a portion of
the plurality of carbon nanotube structures.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dudde US 2011/0259677 A1 Oct. 27,2011
Heppe US 2012/0312918 A1 Dec. 13, 2012
Kere US 2014/0305744 A1 Oct. 16, 2014
REJECTIONS
I. Claims 1, 4–6, 11, 12, and 20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Kere and Heppe.
II. Claims 2 and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Kere, Heppe, and Dudde.
OPINION
Rejection I; Obviousness based on Kere and Heppe
The Examiner finds that Kere discloses many of the limitations of
claim 1, including a structure component comprising optical fibers. Final
Appeal 2021-000417
Application 14/695,280
3
Act. 2–3. The Examiner finds that Heppe teaches carbon nanotubes as an
alternative to optical fibers. Id. at 3. The Examiner concludes that one of
ordinary skill in the art would have had a reasonable expectation of success
in using carbon nanotubes in the strength component of Kere as a high
strength, low weight hoisting member. Id.
Appellant argues, inter alia, that Heppe does not demonstrate
possession of carbon nanotubes because Heppe refers only to carbon
nanotube structures that may be developed in the future and that might
provide high strength properties. Appeal Br. 12–13. According to
Appellant, because Heppe does not provide an enabling disclosure, it cannot
be relied upon to establish prima facie obviousness. Id. at 13.
The Examiner responds that, although Heppe does not disclose a
particular embodiment that uses carbon nanotubes, Heppe sufficiently
discloses carbon nanotubes that one of ordinary skill in the art would know
how to use it. Ans. 4–5. According to the Examiner, Heppe’s disclosure is
commensurate with Appellant’s disclosure of carbon nanotubes. Ans. 5.
Appellant replies that the Examiner mischaracterizes the disclosure of
Heppe because Heppe does not provide any disclosure of nanotube structure
or properties. Reply Br. 5. Appellant argues, moreover, that the disclosure
in the present Specification of carbon nanotubes is irrelevant to Heppe’s
disclosure of carbon nanotubes. Id. at 6.
Appellant has the better position. Heppe discloses that “[i]n the
future, other materials such as Spectra 2000, CFRP or carbon nanotubes
might be constructed into long high-strength tethers.” Heppe ¶ 54 (emphasis
added). Heppe also discloses that “some materials, such as carbon
nanotubes developed in the future, might provide high strength along with
electrical and/or optical conductivity.” Id. (emphasis added). The
Appeal 2021-000417
Application 14/695,280
4
Examiner’s rejection is based on the rationale that an ordinary artisan would
“use carbon nanotubes as taught in Heppe in the plurality of structures of the
strength component as taught in Kere for a high strength, low weight
hoisting member with high conductivity for power or data transmission.”
Final Act. 3. The Examiner’s rationale, however, relies on the existence of
carbon nanotubes as a known alternative material for a hoisting member, and
that this material could also be used to conduct electricity, whereas Heppe
discloses that this material might be developed in the future. The Examiner
identifies no support for a finding that carbon nanotubes were known as a
communication component as well as a structural component. The
disclosure of Heppe undermines any assumption of enablement because it
depends on future developments. The disclosure in an assertedly
anticipating reference must provide an enabling disclosure of the desired
subject matter; mere naming or description of the subject matter is
insufficient, if it cannot be produced without undue experimentation. See
Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research, 346 F.3d
1051, 1054 (Fed. Cir. 2003); see also Chiron Corp. v. Genentech Inc., 363
F.3d 1247, 1254 (Fed. Cir. 2004) (“a patent document cannot enable
technology that arises after the date of application.”). Here, Heppe merely
names carbon nanotubes, and suggests that carbon nanotubes might be used
for tethers in the future.
In light of the discussion above, we do not sustain the Examiner’s
rejection of claim 1. Claims 4–6, 11, and 12 depend from claim 1, and we
do not sustain the rejection of these claims for the same reason. Claim 20
similarly recites “a hoisting member comprising a plurality of carbon
nanotube structures,” and we do not sustain the rejection of claim 20 for the
same reason.
Appeal 2021-000417
Application 14/695,280
5
Rejection II; Obviousness based on Kere, Heppe, and Dudde
Claims 2 and 10 depend from claim 1, and the Examiner does not rely
on the disclosure of Dudde in any manner that would remedy the
deficiencies of the rejection of claim 1 set forth above. Thus, we do not
sustain the rejection of claims 2 and 10.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–6, 11,
12, 20
103 Kere, Heppe 1, 4–6, 11,
12, 20
2, 10 103 Kere, Heppe,
Dudde
2, 10
Overall
Outcome
1, 2, 4–6,
10–12, 20

REVERSED